IPA Technologies Inc., which is a wholly owned subsidiary of Wi-LAN Technologies Inc., which is a wholly owned subsidiary of Wi-LAN Inc., which is a wholly owned subsidiary of Quarterhill Inc.

Patent Trials and Appeals Board

Oct 15, 2020

IPR2019-00813 (P.T.A.B. Oct. 15, 2020)

Trials@uspto.gov Paper No. 44
571.272.7822 Entered: October 15, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

MICROSOFT CORPORATION,
Petitioner,

v.

IPA TECHNOLOGIES, INC.,
Patent Owner.
____________

Case IPR2019-00813
Patent 6,851,115 B1
____________

Before LYNNE E. PETTIGREW, MINN CHUNG, and
KEVIN C. TROCK, Administrative Patent Judges.

TROCK, Administrative Patent Judge.

JUDGMENT
Final Written Decision
Determining All Challenged Claims Unpatentable
Denying Patent Owner’s Motion to Exclude
35 U.S.C. § 318(a); 37 C.F.R. § 42.64

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INTRODUCTION
We have authority to hear this inter partes review under 35 U.S.C.
§ 6. This Final Written Decision issues pursuant to 35 U.S.C. § 318(a) and
37 C.F.R. § 42.73. For the reasons discussed herein, we determine that
Microsoft Corporation (“Petitioner”) has shown, by a preponderance of the
evidence, that claims 1–3, 11, and 48–60 (the “challenged claims”) of U.S.
Patent No. 6,851,115 B1 (Ex. 1001, “the ’115 patent”) are unpatentable. See
35 U.S.C. § 316(e); 37 C.F.R. § 42.1(d).
A. Procedural History
Petitioner filed a request for inter partes review of the challenged
claims of the ’115 patent. Paper 1 (“Pet.” or “Petition”). IPA Technologies,
Inc. (“Patent Owner”) filed a Preliminary Response, Paper 6 (“Prelim.
Resp.”), contending the Petition should be denied as to all challenged
claims.
On October 17, 2019, the Board entered a decision instituting an inter
partes review of all claims and all grounds presented in the Petition. Paper
12 (“Inst. Dec.”).
After institution, Patent Owner filed a Response to the Petition. Paper
22 (“Resp.”). Petitioner thereafter filed a Reply to Patent Owner’s
Response. Paper 30 (“Reply”). Patent Owner filed a corrected Sur-reply to
Petitioner’s Reply. Paper 40 (“Sur-reply”). An oral hearing was held on
July 27 and 28, 2020. A transcript of the hearing is included in the record.
Paper 43 (“Tr.”).
B. Related Proceedings
Petitioner states that the ’115 patent is the subject of the following
actions: IPA Technologies Inc. v. Google LLC, 1-18-cv-00318 (D. Del.) filed
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February 26, 2018; IPA Technologies Inc. v. Microsoft Corporation, 1-18-
cv-00001 (D. Del.) filed January 2, 2018; and IPA Technologies Inc. v.
Amazon.com, Inc. et al., 1-16-cv-01266 (D. Del.) filed December 19, 2016.
Pet. 3.
Petitioner lists four other petitions (IPR2019-00810, IPR2019-00811,
IPR2019-00812, IPR2019-00814) filed by Petitioner against the ’115 patent.
Id. at 2–3.
Petitioner also lists IPR petitions it has filed against other family
members of the ’115 patent (IPR2019-00835, IPR2019-00836, and
IPR2019-00837 (U.S. Patent No. 7,069,560 B1); IPR2019-00838, IPR2019-
00839, and IPR2019-00840 (U.S. Patent No. 7,036,128 B1)). Id. at 2–3.
Petitioner also identifies numerous IPR petitions filed by Google
against the ’115 patent and family members of the ’115 patent (IPR2019-
00728, IPR2019-00729, IPR2019-00730, IPR2019-00731, IPR2019-00732,
IPR2019-00733, IPR2019-00734, IPR2019-00735, IPR2019-00736). Id. at
2.
C. The ’115 Patent (Ex. 1001)
The ’115 patent describes software-based architectures for
communication and cooperation among distributed electronic agents.
Ex. 1001, 1:28–29. The ’115 patent describes an architecture that supports
cooperative task completion by flexible, dynamic configurations of
autonomous electronic agents. Id. at 4:60–62. Service-providing agents
declare their capabilities, and facilitator’s broker communication and
cooperation between the agents, such as by matching requests with
descriptions of capabilities. Id. at 4:63–66, 5:6–7.
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Figure 3 of the ’115 patent, shown below, depicts a distributed agent
system in accordance with one embodiment.

Figure 3, above, shows a distributed agent system 300 that includes a
plurality of agents 320 based around a facilitator agent 310. Id. at 6:3–6.
“The agents 320 forward service requests to the facilitator agent 310,” which
“interprets these requests, organizing a set of goals which are then delegated
to appropriate agents for task completion.” Id. at 6:10–13.
Figure 4 of the ’115 patent is reproduced below.
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Figure 4, above, depicts the structure of a small system 400 including
user interface agents 408, several application agents 404 and meta-agents
406, organized as a community of peers by their common relationship to a
facilitator agent 402. Id. at 6:25–30. The facilitator 402 is a specialized
server agent that is responsible for coordinating agent communications and
cooperative problem-solving and may also provide a global data store for its
client agents, allowing them to adopt a blackboard style of interaction. Id. at
6:32–37. Agents register with a parent facilitator a specification of the
capabilities and services that the agent can provide. Id. at 7:18–20. During
task completion, when a facilitator determines that the registered services
416 of one of its client agents will help satisfy a goal, the facilitator sends
that client a request expressed in the Interagent Communication Language
(ICL) 418. Id. at 7:25–30. The agent parses the request, processes it, and
returns answers or status reports to the facilitator. Id. at 7:30–32.
The Specification provides an express definition for “Interagent
Communication Language”: “Interagent Communication Language (‘ICL’)
418 refers to an interface, communication, and task coordination language
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preferably shared by all agents, regardless of what platform they run on or
what computer language they are programmed in.” Id. at 10:48–53.
Figure 7 of the ’115 patent is reproduced below.

Figure 7, above, shows data structures 700 internal to a facilitator
including an agent registry 702. Each registered agent may be optionally
associated with one or more capabilities, which have associated Capability
Declaration fields 708. The ’115 patent discloses that “[t]hese capabilities
may define not just functionality, but may further provide a utility parameter
indicating, in some manner (e.g., speed, accuracy, etc.), how effective the
agent is at providing the declared capability.” Id. at 16:65–17:2.
D. Challenged Claims
Petitioner challenges claims 1–3, 11, and 48–60 of the ’115 patent.
Pet. 3. Claims 1 and 48 are independent. Claim 1 reads as follows.
1. [(a)] A computer-implemented method for communication and
cooperative task completion among a plurality of distributed
electronic agents, comprising the acts of:
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[(b)(i)] registering a description of each active client agent’s
functional capabilities as corresponding registered functional
capabilities,
[(b)(ii)] using an expandable, platform-independent, inter-agent
language,
[(c)(i)] wherein the inter-agent language includes: a layer of
conversational protocol
[(c)(ii)] defined by event types
[(c)(iii)] and parameter lists associated with one or more of the
events,
[(c)(iv)] wherein the parameter lists further refine the one or more
events;
[(d)] a content layer comprising one or more of goals, triggers and
data elements associated with the events;
[(e)(i)] receiving a request for service as a base goal in the inter-
agent language,
[(e)(ii)] in the form of an arbitrarily complex goal expression;
[(f)] and dynamically interpreting the arbitrarily complex goal
expression,
[(g)] said act of interpreting further comprising: generating one or
more sub-goals expressed in the inter-agent language;
[(h)(i)] constructing a goal satisfaction plan wherein the goal
satisfaction plan includes:
[(h)(ii)] a suitable delegation of sub-goal requests to best complete
the requested service request
[(h)(iii)] by using reasoning that includes one or more of domain-
independent coordination strategies, domain-specific reasoning,
and application-specific reasoning comprising rules and learning
algorithms;
[(i)] and dispatching each of the sub-goals to a selected client agent
for performance, based on a match between the sub-goal being
dispatched and the registered functional capabilities of the
selected client agent.
Ex. 1001, 29:10–44 (numbering and formatting designated by Petitioner; see
Pet. Att. C).
E. Prior Art References
Petitioner relies upon the following prior art references:
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(1) U.S. Patent No. 6,484,155, issued Nov. 19, 2002 (“Kiss”)
(Ex. 1005);
(2) 1997 FIPA v. 1.0 Specification (“FIPA97”) (Ex. 1006–1012);
Petitioner also relies on the Declaration of Dr. Henry Lieberman.
Ex. 1003.
F. Asserted Ground of Unpatentability

Ground Reference(s) Basis Claims
Challenged
1 Kiss/FIPA97 § 103 1–3, 11, 48–60

ANALYSIS
A. Level of Ordinary Skill
In determining whether an invention would have been obvious at the
time it was made, we consider the level of ordinary skill in the pertinent art
at the time of the invention. Graham v. John Deere Co., 383 U.S. 1, 17
(1966). “The importance of resolving the level of ordinary skill in the art
lies in the necessity of maintaining objectivity in the obviousness inquiry.”
Ryko Mfg. Co. v. Nu-Star, Inc., 950 F.2d 714, 718 (Fed. Cir. 1991).
Petitioner describes a person of ordinary skill in the art as “someone
familiar with the principles and conventions of computer science and
computer networking, and also with multi-agent systems and inter-agent
communication languages as documented in agent-centered literature by
1999.” Pet. 4. Petitioner also explains that a person of ordinary skill in the
art “may have been a graduate student in mathematics, engineering, or
computer science, and may have had an advanced degree in one of these
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disciplines, and would also have had at least two years of experience
working in the field of computer science, or a related field, and may have
worked in academia, either as a professor or a graduate student, for a
technology company, or for a government.” Pet. 4–5 (citing Ex. 1003 ¶ 34).
In its Response, Patent Owner asserts that a person of ordinary skill in
the art at the time of the ’115 patent’s filing date would have had “a
Bachelor’s degree in Computer Science or equivalent field and at least two
years of work experience in design and development of distributed systems,
software specification languages, or a related area.” Resp. 23 (citing Ex.
2032 ¶ 37). Patent Owner criticizes Petitioner’s description of the level of
ordinary skill in the art as being “vague and uncertain” as to render it
“meaningless” because of the use of the word “may” in its description. Id.
Patent Owner contends that Petitioner’s proposed description is “particularly
problematic here, where Petitioner claims that it would have been obvious to
create an agent system that is very complex and advanced in its facilitation,
goal processing, and inter-agent communication capacities.” Id. at 24 (citing
Ex. 2032 ¶ 40).
In its Reply, Petitioner argues that its proposal “simply (and
realistically) expresses alternatives—i.e., that a Skilled Artisan would have
been at least a graduate student in several relevant fields (e.g, ‘mathematics,
engineering, or computer science’), and would have had at least two years of
work experience in those fields.” Reply 13–14 (citing Pet. 4–5). Petitioner
also argues that Patent Owner does not articulate how any differences
between the parties’ proposals that would alter or even affect the outcome of
this proceeding. Reply 14.
In its Sur-reply, Patent Owner argues that it has “identified how the
difference between the proposals would affect this proceeding” because
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Patent Owner has pointed out that “it is Petitioner’s burden under the law to
address each Graham factor and Petitioner has failed to proffer a coherent
level of ordinary skill in the art, Petitioner’s obviousness assertion fails for
that reason alone.” Sur-reply 15 (citing Resp. 24).
Patent Owner, however, does not identify any “meaningful
differences” between the parties’ proposed definitions or how “the outcome
of [this proceeding] would have been different” if we adopted Patent
Owner’s proposed description, as opposed to Petitioner’s proposal. See
ESIP Series 2, LLC v. Puzhen Life USA, LLC, 958 F.3d 1378, 1385 (Fed.
Cir. 2020) (citing Genzyme Therapeutic Prod. Ltd. P’ship v. Biomarin
Pharm. Inc., 825 F.3d 1360, 1371–72 (Fed. Cir. 2016)). For example,
Patent Owner does not argue the challenged claims are not unpatentable
under Patent Owner’s proposed description of the level of ordinary skill in
the art, nor does Patent Owner identify any claim limitation that would have
been taught by the asserted prior art under Petitioner’s proposal, but not
under Patent Owner’s proposal. See Resp. 23–24; Sur-reply 14–16.
In our view, the parties’ proposals are not materially different despite
the differences in wording between them (e.g., the education level of a
Bachelor’s degree in Computer Science or equivalent field under Patent
Owner’s proposal, as opposed to a graduate student’s level of education with
or without a Bachelor’s degree under Petitioner’s proposal). For purposes of
this Final Written Decision, we find no meaningful differences between the
parties’ respective proposals that would materially alter the outcome of this
Decision. These proposals are similar for all purposes relevant to this Final
Written Decision, and both are consistent with the level of ordinary skill in
the art reflected in the disclosure of the ’115 patent and the prior art of
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record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In
re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995).
Nonetheless, for this Final Written Decision, we adopt Patent Owner’s
description of a person of ordinary skill in the art at the time of the claimed
invention. That is, a person of ordinary skill in the art at the time of the
claimed invention would have had “a Bachelor’s degree in Computer
Science or equivalent field and at least two years of work experience in
design and development of distributed systems, software specification
languages, or a related area.” Our analysis and conclusions in this Final
Written Decision would be the same regardless of whether Petitioner’s or
Patent Owner’s description of the level of ordinary skill in the art is adopted.
B. Claim Construction
In an inter partes review, we apply the same claim construction
standard that would be used in a civil action under 35 U.S.C. § 282(b),
following the standard articulated in Phillips v. AWH Corp., 415 F.3d 1303
(Fed. Cir. 2005) (en banc). 37 C.F.R. § 42.100(b) (2019). In applying such
standard, claim terms are generally given their ordinary and customary
meaning, as would be understood by a person of ordinary skill in the art, at
the time of the invention and in the context of the entire patent disclosure.
Phillips, 415 F.3d at 1312–13. “In determining the meaning of the disputed
claim limitation, we look principally to the intrinsic evidence of record,
examining the claim language itself, the written description, and the
prosecution history, if in evidence.” DePuy Spine, Inc. v. Medtronic
Sofamor Danek, Inc., 469 F.3d 1005, 1014 (Fed. Cir. 2006) (citing Phillips,
415 F.3d at 1312–17).
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In our Decision on Institution, we preliminarily interpreted certain
claim terms as follows.
Term Construction
“event” “a message or goal communicated between agents”
“event type” “a type of an event”
“goal” “a request for service”
“arbitrarily complex
goal expression”
“a goal expressed in a language or syntax that
allows an expression, when appropriate or when
desired, that expresses multiple sub-goals and can
potentially include more than one type of logical
connector (e.g., AND, OR, NOT), and/or more
than one level of logical nesting (e.g., use of
parentheses), or the substantive equivalent,
although not every goal is itself necessarily
complex”
“compound goal” “a single goal expression that specifies multiple
sub-goals to be performed”

Dec. on Inst. 27–36.
The parties do not dispute the constructions of these terms in the
Patent Owner Response or Petitioner Reply. See Resp. 25–27; Reply 1.
Upon considering the complete record, we discern no reason to deviate from
our preliminary constructions and, therefore, adopt the constructions of the
claim terms “event,” “event type,” “goal,” “arbitrarily complex goal
expression,” and “compound goal” as set forth above for this Final Written
Decision.
In the Petition, Petitioner discusses constructions for additional claim
terms, including “goal satisfaction plan,” “layer of conversational protocol,”
“content layer,” “trigger,” and “parameter lists further refine the one or more
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events.” Pet. 8–16. In addition, in the Petitioner Reply, Petitioner discusses
construction of the claim term “process characteristics.” Reply 12–13.
Patent Owner disputes constructions for two terms, “goal satisfaction plan”
and “process characteristics.” See Resp. 24–38; Sur-reply 13–14. We
discuss constructions for each of the two disputed terms in turn below.
Patent Owner does not discuss Petitioner’s proposed construction for
the claim term “parameter lists further refine the one or more events” or
proposes its own construction for the term. See Resp. 24–38. Nonetheless,
Patent Owner discusses meaning of this term in the context of Patent
Owner’s arguments that FIAP97 does not teach an “expandable . . . inter-
agent language” and “parameter lists” that “further refine the one or more
events,” as recited in claim 1. See id. at 97–106. Although Patent Owner’s
arguments raise an issue of claim construction, Patent Owner’s arguments
are closely related to and interspersed with Patent Owner’s arguments that
FIPA97 does not teach an “inter-agent language” recited in claim 1. Thus,
for efficiency and completeness, we address this issue in the context of the
patentability discussion below.
No other claim terms need to be construed expressly for purposes of
this Final Written Decision. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc.,
200 F.3d 795, 803 (Fed. Cir. 1999) (holding that only terms that are in
controversy need to be construed, and “only to the extent necessary to
resolve the controversy”); see also Nidec Motor Corp. v. Zhongshan Broad
Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (applying Vivid
Techs. in the context of an inter partes review).
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1. “goal satisfaction plan”
The claim term “goal satisfaction plan” is recited in all but one of
independent claims of the ’115 patent—claims 1, 29, 61, 71, and 86, the one
exception being claim 48. See Ex. 1001, 29:33–40 (claim 1), 32:9–21
(claim 29), 35:24–29 (claim 61), 36:17–23 (claim 71), 37:22–38:5
(claim 86). “[W]e presume, unless otherwise compelled, that the same claim
term in the same patent or related patents carries the same construed
meaning.” Paice LLC v. Ford Motor Co., 881 F.3d 894, 904 (Fed. Cir.
2018) (quoting Omega Eng’g, Inc. v. Raytek Corp., 334 F.3d 1314, 1334
(Fed. Cir. 2003). The parties do not contend that the term “goal satisfaction
plan” has different meanings in different claims of the ’115 patent. See Pet.
10; Resp. 27–38; Reply 1–12; Sur-reply 2–13.
Petitioner contends that a “goal satisfaction plan” is a “procedure for
sending one or more requests for service to one or more agents in order to
satisfy a goal.” Pet. 10. Patent Owner disagrees and asserts that the claim
term “goal satisfaction plan” should be construed to mean “a plan for the
satisfaction of a complex goal expression in an optimal or near-optimal
manner that is consistent with any advice parameters or constraints.” Resp.
28.
a. Claim Language
We begin our claim construction analysis by considering the language
of the claims themselves. Phillips, 415 F.3d at 1314. Addressing the claim
language of the disputed term, we note that the claim language “a goal
satisfaction plan” indicates that the term’s plain meaning is “a plan for
satisfying a goal.”
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In the challenged independent claims 1 and 29, the term “goal
satisfaction plan” is further limited (in different ways) by specific limitations
recited in the claims. For example, claim 1 recites:
constructing a goal satisfaction plan wherein the goal satisfaction plan
includes:
a suitable delegation of sub-goal requests to best complete the
requested service request—by using reasoning that includes one or more of
domain-independent coordination strategies, domain-specific reasoning, and
application-specific reasoning comprising rules and learning algorithms;
Ex. 1001, 29:32–39 (emphases added). In contrast, claim 29 recites:
constructing a base goal satisfaction plan including the sub-acts of:
determining whether the request service is available,
determining sub-goals required in completing the base goal by using
reasoning that includes one or more of domain-independent coordination
strategies, domain-specific reasoning, and application-specific reasoning
comprising rules and learning algorithms,
selecting service-providing electronic agents from the agent registry
suitable for performing the determined sub-goals, and
ordering a delegation of sub-goal requests complete the requested
service;
Id. at 32:9–21 (emphasis added).
As shown above, the “optimal or near-optimal”1 limiting feature
argued by Patent Owner is recited in claim 1 (“a suitable delegation of

1 Patent Owner asserts that the term “optimal” and “near optimal” has a
well-established meaning in the context of computer engineering, citing a
technical dictionary, which defines optimization as “[t]he process of finding
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sub-goal requests to best complete the requested service request”), but not in
claim 29. This shows that the patentee knew how to restrict the “goal
satisfaction plan” to “best complete the requested service request,” i.e.,
satisfy a goal “in an optimal or near-optimal manner.” If the patentee had
intended to similarly restrict the “goal satisfaction plan” in claim 29, it could
have done so using the language of claim 1, but did not. See Intellectual
Ventures I LLC v. T-Mobile USA, Inc., 902 F.3d 1372, 1379 (Fed. Cir. 2018)
(citing Unwired Planet, LLC v. Apple Inc., 829 F.3d 1353, 1359 (Fed. Cir.
2016)).
Thus, Patent Owner’s proposed construction that generally requires a
“goal satisfaction plan” to satisfy a goal “in an optimal or near-optimal
manner” would have the effect of obfuscating the material differences in the
claim language of claim 1 and claim 29 discussed above.
In addition, for claim 1, Patent Owner’s proposed construction would
render the limitation “suitable delegation of sub-goal requests to best
complete the requested service request” recited in claim 1 superfluous. Such
a construction is presumed improper. See Digital-Vending Servs. Int’l, LLC
v. Univ. of Phoenix, Inc., 672 F.3d 1270, 1274–75 (Fed. Cir. 2012) (rejecting
the district court’s construction narrowing a term by a superfluous limitation
when the claims explicitly recited the narrowing limitation, and discussing
the “well-established rule that claims are interpreted with an eye toward
giving effect to all terms in the claim”) (quoting Bicon, Inc. v. Straumann
Co., 441 F.3d 945, 950 (Fed. Cir. 2006)) (internal quotation marks omitted);
LSI Indus., Inc. v. ImagePoint, Inc., 279 F. App’x 964, 972 (Fed. Cir. 2008)

the best solution to some problem, where ‘best’ accords to prestated
criteria.” Sur-reply 6 (emphasis added) (citing Ex. 2078, 3).
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(nonprecedential) (rejecting the district court’s construction of “display
device” as necessarily including the superfluous limitation of “internal
illumination” because other claim terms specifically recited an “illuminated
display device”); but cf. ERBE Elektromedizin GmbH v. Canady Tech. LLC,
629 F.3d 1278, 1286 (Fed. Cir. 2010) (“no canon of [claim] construction is
absolute in its application”) (citation omitted).
Considering next the Patent Owner-argued the limiting feature of
satisfying a goal “consistent with any advice parameters or constraints,” this
feature is recited in claim 29, but not in claim 1. Claim 29 recites “the act of
interpreting including the sub-acts of: determining any task completion
advice provided by the base goal, and determining any task completion
constraints provided by the base goal” (Ex. 1001, 32:4–8 (emphases
added)), whereas claim 1 does not recite “advice” or “constraint” (see id. at
29:10–44). Thus, Patent Owner’s proposed construction is disfavored
because it would blur the material differences in the claim language of
claim 1 and claim 29 discussed above.
Finally, Patent Owner’s proposed construction replaces “goal” with
“complex goal expression.” Again, this feature is recited in claim 1, but not
in claim 29. Claim 1 recites “receiving a request for service as a base goal in
the inter-agent language, in the form of an arbitrarily complex goal
expression; and dynamically interpreting the arbitrarily complex goal
expression” (Ex. 1001, 29:25–30), whereas claim 29 recites “interpreting a
service request in order to determine a base goal that may be a compound,
arbitrarily complex base goal” (id. at 31:59–61) (emphasis added). Because
of the permissive language “may be” used in claim 29, a “goal” is not
necessarily required to be in the form of an arbitrarily complex goal
expression in claim 29. Again, Patent Owner’s proposed construction is
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disfavored because it would blur the material differences in the claim
language of claim 1 and claim 29 discussed above.
Thus, at least based on the claim language, it is not appropriate to
limit “goal satisfaction plan” as Patent Owner contends. As discussed
above, the meaning and the scope of “goal satisfaction plan” is clear on the
face of each claim because claims 1 and 29 each recite specifically what a
“goal satisfaction plan” includes or comprises in different claims.
Therefore, absent compelling evidence to the contrary, it is neither necessary
nor appropriate to limit the meaning of the term “goal satisfaction plan”
beyond the plain meaning indicated by the claim language—i.e., “a plan for
satisfying a goal.”
b. Written Description
Turning to the Specification, Patent Owner cites the following
statement in the “Summary of the Invention” section:
[e]xtreme flexibility is achieved through an architecture organized
around the declaration of capabilities by service-providing agents, the
construction of arbitrarily complex goals by users and service-requesting
agents, and the role of facilitators in delegating and coordinating the
satisfaction of these goals, subject to advice and constraints that may
accompany them.
Resp. 31 (quoting Ex. 1001, 5:3–9). The very first sentence of the
paragraph cited by Patent Owner states, however, “[a] first embodiment of
the present invention discloses a highly flexible, Software-based architecture
for constructing distributed systems.” Ex. 1001, 4:58–60 (emphasis added).
Indeed, all of the portions of the Specification cited by Patent Owner,
including the passage reproduced above, describe various embodiments of
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the ’115 patent. See Resp. 30–33 (citing Ex. 1001, 5:3–9, 5:48–49, 15:37–
39, 15:66–16:1, 16:11–21, 16:38–46, 18:35–48, 28:47–54, Fig. 11).
In general, “a particular embodiment appearing in the written
description may not be read into a claim when the claim language is broader
than the embodiment.” SuperGuide Corp. v. DirecTV Enters., Inc., 358 F.3d
870, 875 (Fed. Cir. 2004) (citation omitted). As discussed above, the
challenged independent claims 1 and 29 do not recite all of the limiting
features required by Patent Owner’s proposed construction of “goal
satisfaction plan.” Thus, unless one of the established exceptions, such as
lexicography or disavowal, applies, the challenged claims are not restricted
as Patent Owner contends. See, e.g., GE Lighting Sols., LLC v. AgiLight,
Inc., 750 F.3d 1304, 1309 (Fed. Cir. 2014) (“the specification and
prosecution history only compel departure from the plain meaning in two
instances: lexicography and disavowal”) (citation omitted). Here, Patent
Owner does not argue lexicography or disavowal. Nor does Patent Owner
explain any other reason why the Specification limits “goal satisfaction
plan” as it contends. Thus, claim construction in this case is governed by the
general principle that “a particular embodiment appearing in the written
description may not be read into a claim when the claim language is broader
than the embodiment.” SuperGuide, 358 F.3d at 875; see also WesternGeco
LLC v. ION Geophysical Corp., 889 F.3d 1308, 1323–24 (Fed. Cir. 2018)
(“It is well established that claims are not limited to preferred embodiments,
unless the specification clearly indicates otherwise.” (citing Comaper Corp.
v. Antec, Inc., 596 F.3d 1343, 1348 (Fed. Cir. 2010) (“[T]his court has
repeatedly cautioned against limiting claims to a preferred embodiment.”))).
Accordingly, none of the embodiments in the Specification cited by Patent
Owner limits “goal satisfaction plan” as Patent Owner contends.
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c. Prosecution History
Turning next to the prosecution history, Patent Owner asserts that “examples
in the file history confirm the elements of ‘goal satisfaction plan’ reflected in
Patent Owner’s proposed construction.” Resp. 35–36. Patent Owner argues,
during the prosecution of the application for the ’115 patent,
Applicant further stated that “the facilitating engine is able to use reasoning
to delegate the sub-goals to service providing agents in such a way as ‘to
best complete the requested service request.’…The facilitating engine is
able to use reasoning to delegate the sub-goal task of roasting coffee to the
service-providing agent that can roast beans in the least amount of time
because the facilitating engine has reasoned that the least amount of time
taken to make coffee is the best way to accomplish the base goal of making
coffee.” Applicant concluded that “the base goal is carried out not by
merely parsing the request into sub-goals” but rather “the facilitating
engine used reasoning to decide upon using competing message transfer
agents to reminding Bob of lunch, in lieu of delegating the task to just one
message transfer agent.”
Id. at 35 (citing Ex. 1002, 172–173). As discussed above, however, the
limiting feature argued by Patent Owner is recited in claim 1 (“a suitable
delegation of sub-goal requests to best complete the requested service
request”), but not in claim 29. Thus, Patent Owner’s argument is
unpersuasive for the same reasons discussed above.
d. Extrinsic Evidence
Patent Owner also cites the testimony of its declarant,
Dr. Medvidovic, in support of Patent Owner’s proposed construction of
“goal satisfaction plan.” Resp. 36–37 (citing Ex. 2032 ¶¶ 51–52, 54–59,
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129). We have reviewed the cited testimony from Dr. Medvidovic, but do
not find anything in his testimony that would change our analysis based on
intrinsic record discussed above. See Phillips, 415 F.3d at 1318 (authorizing
the consideration of extrinsic evidence in determining the meaning of claims
but noting that it is “in general . . . less reliable than the patent and its
prosecution history in determining how to read claim terms”).
e. Other Arguments
The parties dispute whether Petitioner’s use of “procedure” (in place
of a “plan”) and “sending one or more requests for service” in Petitioner’s
proposed construction is appropriate. See Resp. 37–38; Reply 2–4, 11–12;
Sur-reply 3, 13. We need not address these arguments in detail because, for
the reasons discussed above, we see no reason to depart from the plain
meaning of the term “goal satisfaction plan.”
f. Conclusion
Based on the complete record and after examining the claims as a
whole, the Specification, and the prosecution history, we construe the term
“a goal satisfaction plan” according to its plain meaning—“a plan for
satisfying a goal.”
C. Patentability Challenges
Petitioner asserts claims 1–3, 11 and 48–60 are unpatentable as
obvious under 35 U.S.C. § 103 over the combination of Kiss and FIPA97.
Pet. 32–85. Claims 1 and 48 are independent.
Petitioner argues that FIPA97 provides a common communications
protocol and language (FIPA ACL) between the agents of Kiss, and also
adds its administrative functionality and exemplary practices to the Kiss
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system. Pet. 28–29. Petitioner explains, “[t]hese techniques are used to
implement the functionality described in Kiss, including facilitating agent
collaboration, agent registry, and inter-agent messaging.” Id. at 28 (citing
Ex. 1005, 3:32–36, 3:67–4:1, 6:67–7:1). Petitioner asserts, “[w]here the two
systems disclose analogous functionality, such as facilitating cooperation
and agent registry, their techniques are combined, as a Skilled Artisan would
understand that to be an efficient and common sense way to implement the
combined system in order to obtain the benefits of both, and therefore be
motivated to do so.” Id. (citing Ex. 1003 ¶¶ 217–219).
1. Principles of Law on Obviousness
To prevail in challenging Patent Owner’s claims, Petitioner must
demonstrate by a preponderance of the evidence that the claims are
unpatentable. 35 U.S.C. § 316(e); 37 C.F.R. § 42.1(d). “In an [inter partes
review], the petitioner has the burden from the onset to show with
particularity why the patent it challenges is unpatentable.” Harmonic Inc. v.
Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C.
§ 312(a)(3) (requiring inter partes review petitions to identify “with
particularity . . . the evidence that supports the grounds for the challenge to
each claim”)). This burden never shifts to Patent Owner. See Dynamic
Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir.
2015) (citing Tech. Licensing Corp. v. Videotek, Inc., 545 F.3d 1316, 1326–
27 (Fed. Cir. 2008)) (discussing the burden of proof in inter partes review).
Section 103(a) forbids issuance of a patent when “the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.” Obviousness is a question of law based on
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underlying factual findings, including: (1) the level of ordinary skill in the
art; (2) the scope and content of the prior art; (3) the differences between the
claims and the prior art; and (4) secondary considerations of nonobvious-
ness, such as commercial success, long-felt but unmet needs, failure of
others, and unexpected results. See KSR Int'l Co. v. Teleflex, Inc., 550 U.S.
398, 406 (2007); Graham v. John Deere Co. of Kan. City, 383 U.S. 1, 17–18
(1966).
The Supreme Court has made clear that we apply “an expansive and
flexible approach” to the question of obviousness. KSR Int’l Co. v. Teleflex,
Inc., 550 U.S. 398, 415 (2007). Whether a patent claiming the combination
of prior art elements would have been obvious is determined by whether the
improvement is more than the predictable use of prior art elements according
to their established functions. KSR, 550 U.S. at 417. Reaching this
conclusion, however, requires more than a mere showing that the prior art
includes separate references covering each separate limitation in a claim
under examination. Unigene Labs., Inc. v. Apotex, Inc., 655 F.3d 1352,
1360 (Fed. Cir. 2011). Rather, obviousness requires the additional showing
that a person of ordinary skill at the time of the invention would have
selected and combined those prior art elements in the normal course of
research and development to yield the claimed invention. Id.
2. Prior Art
a. Kiss (Ex. 1005)
Kiss describes “a knowledge management system that supports
inquiries of distributed knowledge resources,” as illustrated in Figure 1
below. Ex. 1005, 2:44–45.
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Kiss’ Figure 1, above, is a conceptual overview of one embodiment of
a knowledge management system. Id. at 5:1–2. Kiss’ knowledge
management system 100 includes a presentation layer 103, a user interface
layer 105, a meta agent layer 107, a knowledge agent layer 109, a
knowledge module layer 111, and an agent service layer 113. Id. at 5:3–7.
The meta agent layer 107 includes one or more meta agents 119 that
are responsible for analyzing queries or problem formulations provided by
the user interface layer 105 and constructing a plan for finding a solution to
the problem. Id. at 5:20–24. More specifically, “meta agent 119 is
responsible for formulating a dynamic ‘solution plan’ for the distributed
inferencing to be performed by the system 100, and allocates tasks to the
knowledge agent layer 109 in furtherance of the solution plan.” Id. at 5:33–
37. “The meta agent solution plan attempts to employ all elements of
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information contained in the parsed inquiry in the development of search-
space constraints.” Id. at 8:34–37.
The knowledge agent layer 109 includes multiple knowledge agents
121, each of which may be associated with one or more knowledge modules
123 in the knowledge module layer 111. Id. at 6:31–35. The knowledge
agent 121 is configured to accept from a meta agent 119 a problem statement
and convert that problem statement into a format appropriate for the
knowledge module 123 associated with the knowledge agent 121. Id. at
6:35–38.
b. FIPA97 (Ex. 1006–1012)
FIPA97 (Exs. 1006–1012) is a specification created by the Foundation
for Intelligent Physical Agents (FIPA) beginning in 1996 with an official
release date in October 1997. Ex. 1006, Cover, iv (identifying specification
as FIPA 97 Version 1.0 issued on October 10, 1997). FIPA97 is a
“specification of basic agent technologies that can be integrated by agent
systems developers to make complex systems with a high degree of
interoperability.” Id. at v. The specification comprises seven parts: three
parts for basic agent technologies (Parts 1–3 relating to agent management,
agent communication language, and agent/software integration) and four
informative applications providing examples of how the technologies can be
applied (Parts 4–7 describing personal travel assistance, personal assistant,
audio-visual entertainment, and broadcasting and network management and
provisioning applications). Id. at v–vii; see generally Exs. 1006–1008
(Parts 1–3); Exs. 1009–1012 (Parts 4–7).
Part 1 of FIPA97 “provides a normative framework within which
FIPA compliant agents can exist, operate and be managed.” Ex. 1006, vi.
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Part 2 of FIPA97 describes an “Agent Communication Language (ACL)”
that “is based on speech act theory: messages are actions, or communicative
acts, as they are intended to perform some action by virtue of being sent.”
Id. The ACL specification “consists of a set of message types and the
description of their pragmatics, [i.e.,] the effects on the mental attitudes of
the sender and receiver agents.” Id. The ACL specification “also provides
the normative description of a set of high-level interaction protocols,
including requesting an action, contract net and several kinds of auctions.”
Id.
Part 2 of FIPA97 discloses a “simple abstract model of inter-agent
communication” including ACL messages having components as illustrated
in Figure 1 below. Ex. 1007, 7, 12.

Figure 1, above, illustrates the main structural elements of an ACL message
in FIPA97. Id. at 12. “The first element of the message is a word which
identifies the communicative act being communicated, which defines the
principal meaning of the message.” Id. Each ACL message contains a set of
one or more parameters, including a mandatory “:receiver” parameter that
identifies the intended recipient of the message. Id. at 13.
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Petitioner asserts that FIPA97 was made publicly available as a single
document and relies on FIPA97 as a single printed publication for purposes
of 35 U.S.C. § 102(a). See Pet. 22; Pet. Reply 26. As discussed below in
the section addressing the status of FIPA97 as a printed publication, FIPA
approved and released FIPA 97 Version 1.0 as a single specification. See
infra § II.E; Ex. 1026, 5; Ex. 1050 ¶ 165. Thus, although sometimes the
seven parts are referred to as “documents,” a person of ordinary skill in the
art would have considered FIPA97 to be a single reference. See Ex. 1050
¶¶ 164–165. Patent Owner does not dispute that FIPA97 is one reference for
purposes of §§ 102 and 103. See Resp. 138–40.2 Because FIPA and skilled
artisans considered FIPA97 to be a single specification, we agree that
FIPA97 constitutes a single prior art reference, and we treat it as such for
purposes of our unpatentability analysis.
3. Prior Art Status Issues
Patent Owner challenges the prior art status of both Kiss and FIPA97.
c. Status of Kiss
Petitioner relies on Kiss as a prior art reference in all of the asserted
grounds of unpatentability presented in the Petition. See Pet. 3–4. Petitioner
has the burden of persuasion to prove unpatentability by a preponderance of
the evidence. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d
1375, 1379 (Fed. Cir. 2015). Petitioner also has the initial burden of

2 Contrary to Patent Owner’s argument (Resp. 138–40), Petitioner did not
argue in another case, and the Board did not find, that FIPA97 is seven
separate prior art references. See Microsoft Corp. v. IPA Techs. Inc.,
IPR2019-00838, Paper 13 at 3–5 (PTAB Apr. 3, 2020) (Decision Denying
Petitioner Request for Rehearing), Paper 10 at 4–9 (Petitioner’s Request for
Rehearing, filed Dec. 6, 2019).
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production to show that a reference is prior art to the challenged claims
under a relevant section of 35 U.S.C. § 102. See id. Once Petitioner has met
that initial burden, the burden of production shifts to Patent Owner to argue
or produce evidence that the asserted reference is not prior art to the claims.
Id. at 1380. Once Patent Owner has met that burden of production, the
burden of production returns to Petitioner. Id.
The filing date of the ’115 patent is January 5, 1999. Ex. 1001,
code (22). As noted above, Kiss is a United States patent that arose from an
application filed July 21, 1999, claiming the benefit of priority to a
provisional application filed July 21, 1998. Ex. 1005, codes (22), (60).
Petitioner asserts that Kiss is prior art to the ’115 patent under
35 U.S.C. § 102(e) because Kiss is entitled to the benefit of priority to the
filing date of its provisional application (Ex. 1036, “Kiss Provisional
Application”). Pet. 16–20. “A reference patent is only entitled to claim the
benefit of the filing date of its provisional application if the disclosure of the
provisional application provides support for the claims in the reference
patent in compliance with § 112, ¶ 1.” Dynamic Drinkware, 800 F.3d at
1381.
In Ex parte Mann, the Board held that “under Dynamic Drinkware, a
non-provisional child can be entitled to the benefit of a provisional
application’s filing date if the provisional application provides sufficient
support for at least one claim in the child.” 2016 WL 7487271, at *6 (PTAB
Dec. 21, 2016) (emphasis added) (discussing whether Dynamic Drinkware
requires “support in the provisional . . . for all claims, any claim, or
something in between”). In addition, the Board held that a “subject matter
test” is also required—that is, “the [party claiming priority] also must show
that the subject matter relied upon in the non-provisional is sufficiently
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supported in the provisional application [and that t]his subject matter test is
in addition to the comparison of claims required by Dynamic Drinkware.”
Id. at *5.
Recognizing these requirements, Petitioner asserts that “each element
of [claim 1 of Kiss] has written description support in the Kiss Provisional,”
providing detailed citations to the supporting disclosures from the Kiss
Provisional Application for each limitation of claim 1 of Kiss. Pet. 16–18.
Addressing the “subject matter test,” Petitioner asserts that “the teachings
that Petitioner relies upon were carried forward from the Kiss Provisional to
Kiss” and provides a detailed mapping of the relied-upon portions of Kiss to
the corresponding portions of the Kiss Provisional Application. Id. at 18–
20.
In the Institution Decision, we determined, based on the preliminary
record, that Petitioner has presented sufficient argument and evidence to
meet its initial burden of production on the issue of whether Kiss is entitled
to the benefit of the filing date of the Kiss Provisional Application so as to
shift the burden of production to Patent Owner to argue or produce evidence
that Kiss is not prior art to the challenged claims. Inst. Dec. 25.
In its Preliminary Response, Patent Owner asserted that Kiss is not
entitled to the priority date of its provisional application. Prelim. Resp. 66–
67. In the Institution Decision, we determined, based on the preliminary
record, the argument and evidence presented by Patent Owner was
insufficient to shift the burden of production back to Petitioner. Inst. Dec.
25–27. We noted, however, a final determination on this particular issue
will be made based on a full record developed during the course of trial. Id.
at 27.
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During the trial, Patent Owner did not present any argument or
evidence on this issue, nor did it dispute Kiss qualifies as prior art in this
proceeding. See generally Resp.
Based on the complete record, we determine that Petitioner has
established by a preponderance of the evidence that Kiss is prior art to the
’115 patent under 35 U.S.C. § 102(e) because Kiss is entitled to the benefit
of priority to the filing date of its provisional application.
d. Status of FIPA97
Before reaching the merits of Petitioner’s obviousness contentions, all
of which are based in part on FIPA97 (Exhibits 1006–1012), we must
determine as a threshold matter whether FIPA97 is a prior art printed
publication under 35 U.S.C. § 102(a) or § 102(b). See Pet. 22–24.
Petitioner bears the burden of establishing by a preponderance of the
evidence that FIPA97 is a printed publication. See 35 U.S.C. § 316(e);
Nobel Biocare Servs. AG v. Instradent USA, Inc., 903 F.3d 1365, 1375 (Fed.
Cir. 2018); Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039,
Paper 29 at 11 (PTAB Dec. 20, 2019) (precedential) (citing Nobel Biocare,
903 F.3d at 1375). For purposes of instituting an inter partes review we
accepted Petitioner’s contention, unchallenged in Patent Owner’s
Preliminary Response, that FIPA97 was available as prior art as of
October 1997, more than one year before January 5, 1999, the effective
filing date of the ’560 patent. Dec. 40–42. Patent Owner, however,
challenges that contention in its Patent Owner Response, and the parties
further address the issue in Petitioner’s Reply and Patent Owner’s Sur-reply.
See Resp. 45–65; Pet. Reply 17–29; Sur-reply 20–35.
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The determination of whether a document is a “printed publication”
under 35 U.S.C. § 102 “involves a case-by-case inquiry into the facts and
circumstances surrounding the reference’s disclosure to members of the
public.” In re Klopfenstein, 380 F.3d 1345, 1350 (Fed. Cir. 2004).
“Because there are many ways in which a reference may be disseminated to
the interested public, ‘public accessibility’ has been called the touchstone in
determining whether a reference constitutes a ‘printed publication’ . . . .”
Jazz Pharm., Inc. v. Amneal Pharm., LLC, 895 F.3d 1347, 1355 (Fed. Cir.
2018) (quoting In re Hall, 781 F.2d 897, 898–99 (Fed. Cir. 1986)). A
reference is considered publicly accessible if it was “disseminated or
otherwise made available to the extent that persons interested and ordinarily
skilled in the subject matter or art, exercising reasonable diligence, can
locate it.’” Id. at 1355–56 (quoting In re Wyer, 655 F.2d 221, 226 (CCPA
1981)).
In the discussion below, we begin with background information
regarding FIPA and an overview of the evidence submitted by Petitioner in
support of its contention that FIPA97 was publicly accessible in October
1997. The evidence includes extensive testimony from Dr. Finin, a
professor who has personal knowledge of FIPA’s activities and the
development process of FIPA97. See Ex. 1049 ¶¶ 1–55 (Finin Decl.).
Dr. Finin was one of the first two FIPA Fellows invited to provide “high
quality and independent advice to FIPA.” Id. ¶ 18 (quoting Ex. 1076, 1);
Ex. 1025, 1; Ex. 1062, 1. The evidence also includes testimony from
Petitioner’s expert witness, Dr. Lieberman, and more than sixty
documentary exhibits on which Petitioner relies to show that FIPA97 was
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publicly accessible in late 1997 and early 1998. See Ex. 1050 ¶¶ 142–149
(Lieberman Decl.); Exs. 1021–33, 1047, 1051–1105.
After providing an overview of the evidence, we consider the parties’
arguments as to whether FIPA97 was publicly accessible before the
January 5, 1999, critical date. For the reasons explained below, we
determine that Petitioner has met its burden to show that FIPA97 was
publicly accessible before the critical date.
i. FIPA
FIPA was a non-profit association based in Geneva, Switzerland,
created to promote agent-based technology and develop open standards.
Ex. 1006, iv (FIPA 97 Specification Version 1.0, Part 1, Foreword);
Ex. 1049 ¶ 3. Founded in 1996, FIPA’s membership included numerous
technology companies, educational institutions, and governmental entities.
Ex. 1049 ¶ 3. As of October 1997, FIPA had thirty-five corporate members
representing twelve countries.3 Ex. 1006, iv. According to FIPA
documentation, membership was “open to any corporation and individual
firm, partnership, governmental body or international organi[z]ation without
restriction.” Id. FIPA stated its intent “to make the results of its activities
available to all interested parties.” Id. Throughout its tenure, FIPA
produced standards designed to promote and advance agent-based
technology. Ex. 1049 ¶ 3. In 2005, FIPA was incorporated into the Institute
of Electrical and Electronics Engineers (IEEE) as one of its standards
committees. Id.

3 The corporate members included Alcatel, British Telecommunications,
Deutsche Telekom, France Telecom, Hitachi, Hewlett-Packard, IBM, NEC,
NTT, Nortel, Siemens, and Toshiba. See Ex. 1095, 22.
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ii. Development of FIPA97
The process of drafting the FIPA 97 specification began with FIPA’s
first meeting in London in April 1996. Ex. 1049 ¶ 6; Ex. 1058 (Main results
of London meeting); Ex. 1066 (Resolutions of London meeting).
Representatives from twenty-six companies and organizations attended.
Ex. 1066, 1. At the meeting, the members agreed on FIPA’s mission,
drafted statutes and operational principles, and produced a work plan for a
specification that would become FIPA 97. Ex. 1058, 1; Ex. 1066, 1–3;
Ex. 1049 ¶ 6. The work plan set a December 1997 target for producing a
first completed specification. Ex. 1066, 2–3; Ex. 1049 ¶ 7.
FIPA subsequently held several meetings in 1996 and 1997. At the
second meeting in June 1996 in Yorktown Heights, NY, FIPA approved
several documents, including a framework for FIPA activity and a list of
requirements for FIPA-specified agent capabilities. Ex. 1067, 1
(Resolutions of Yorktown meeting); Ex. 1060, 1 (Results of Yorktown
meeting); Ex. 1049 ¶ 9. At the third meeting in October 1996 in Tokyo,
FIPA approved a final work plan calling for production of a FIPA
specification in October 1997. Ex. 1049 ¶ 11; Ex. 1070, 1 (work plan);
Ex. 1023 (Results of Tokyo meeting). Also at the Tokyo meeting, FIPA
produced its First Call for Proposals, which outlined in detail three
technology parts (corresponding to Parts 1–3 of FIPA 97) and four
application parts (corresponding to Parts 4–7 of FIPA 97). Ex. 1069, 1–27
(First Call for Proposals); Ex. 1049 ¶ 12.
In 1997, FIPA began to produce draft specifications. At the fourth
meeting in January 1997 in Turin, Italy, FIPA publicly released drafts of
Parts 1–4 and posted them on the FIPA home page
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(http://drogo.cselt.stet.it/fipa). Ex. 1021, 1 (Results of Turin meeting);
Ex. 1049 ¶ 13. Additionally, FIPA released a Second Call for Proposals at
the Turin meeting. Ex. 1071, 1–3 (Second Call for Proposals); Ex. 1049
¶ 13. At the fifth meeting in April 1997 in Reston, VA, FIPA produced
drafts of Parts 1–7, which were publicly released and posted on the FIPA
home page. Ex. 1024 (Results of Reston meeting); Ex. 1061 (Resolutions of
Reston meeting); Ex. 1049 ¶ 17. At the sixth meeting in June 1997 in Cheju
Island, South Korea, FIPA publicly released revised drafts of Parts 1–7 and
posted them on the FIPA home page. Ex. 1025, 1 (Results of Cheju
meeting); Ex. 1062, 5 (Resolutions of Cheju meeting); Ex. 1049 ¶ 19.
According to Dr. Finin, the Reston Draft and Cheju Draft were substantially
complete versions of what would become FIPA 97. Ex. 1049 ¶¶ 17, 19.
Dr. Finin testifies that news of FIPA and its standardization efforts
“spread quickly throughout the relatively small community of software agent
researchers.” Ex. 1049 ¶ 8. For instance, the AgentWeb website, “a
meeting place for researchers in agent-based technology from 1995–2000,”
was home to a “Software Agents” mailing list and a newsletter that had more
than 1,300 subscribers in 1996. Id.; Ex. 1089, 5. Dr. Finin was “the
founder, author, and a subscriber” of the AgentWeb newsletter. Ex. 1049
¶ 8. The widely distributed AgentWeb newsletters announced upcoming
FIPA meetings, reported results of previous meetings, including calls for
proposals, and provided links to the specification drafts posted on the FIPA
home page. See id. ¶¶ 8, 10, 12, 14, 17, 19.
For example, the AgentWeb newsletter dated May 11, 1996,
announced the upcoming FIPA June 1996 Yorktown meeting, described as
the “FIPA Opening Forum.” Ex. 1090, 5; Ex. 1049 ¶ 8. The purpose of the
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meeting, as stated in the newsletter, was to “refine the list of basic agent
capabilities candidate for FIPA specification; compile a first list of agent
capabilities intended for specification by end 1997; and establish the first
working groups.” Ex. 1090, 5. Likewise, the AgentWeb newsletter dated
August 12, 1996, advertised the FIPA October 1996 Tokyo meeting.
Ex. 1088, 1; Ex. 1049 ¶ 10. Thereafter, the AgentWeb newsletter dated
October 14, 1996, publicized the Call for Proposals issued at the
October 1996 Tokyo meeting and provided the deadline for submission of
proposals to be considered at the Turin meeting in January 1997. Ex. 1087,
1; Ex. 1049 ¶ 12. FIPA had decided that respondents who submitted
proposals would be invited to the January 1997 meeting to present their
proposals even if they were not FIPA members. Ex. 1023, 1; see Ex. 1069,
27.
Once FIPA began to produce drafts of the specification, AgentWeb
newsletters announced those drafts and provided links to access them. The
AgentWeb newsletter dated February 2, 1997, reported that “[i]nitial
specifications for three technology parts (Agent Management, Agent
Communication and Agent/Software Interaction) and one application part
(Personal Travel Assistance) have been produced” at the recent Turin
meeting. Ex. 1091, 1; Ex. 1049 ¶ 14. The newsletter included a freely
accessible and public link to access the draft. Ex. 1049 ¶ 14 (citing
Ex. 1091, 1–2). It also indicated that drafts of the remaining three
specification parts would be generated at the FIPA meeting to be held in
April 1997 in Reston. Ex. 1091, 1–2. A subsequent AgentWeb newsletter
dated April 13, 1997, advertised the upcoming Reston meeting and
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contained links to information about the meeting on the FIPA website.
Ex. 1092, 3; Ex. 1049 ¶ 17.
On May 5, 1997, following the Reston meeting, an AgentWeb
newsletter reported that attendees of that meeting produced a revised draft
including all seven parts of the specification. Ex. 1093, 2; Ex. 1049 ¶ 17.
The newsletter contained individual public links to the seven parts and
invited “both members and non-members” to comment, providing an email
address for submission. Id.; Ex. 1049 ¶ 17. Additionally, the newsletter
announced the dates and locations of the next two meetings—the June 1997
Cheju meeting and the seventh meeting to take place in Munich on
October 6–10, 1997. Id. Similarly, the AgentWeb newsletter dated June 30,
1997, announced that the Cheju meeting resulted in revised versions of the
FIPA specification documents and provided direct links to the seven parts.
Ex. 1094, 1–2; Ex. 1049 ¶ 19. Again, the newsletter stated that FIPA invited
comments and that non-members making substantial comments would be
invited to attend the October 1997 Munich meeting. Ex. 1094, 2. Dr. Finin
was among those who submitted comments on the Cheju draft. Ex. 1073;
Ex. 1049 ¶ 20.
Meanwhile, the AgentWeb Software Agents mailing list also provided
information regarding FIPA’s efforts to the community of software agent
researchers. See Ex. 1049 ¶ 8. Dr. Finin was an organizer of and
contributor to the Software Agents mailing list. Id. On May 2, 1996, a
posting to the mailing list referenced the upcoming June 1996 FIPA meeting
in Yorktown Heights, New York. Ex. 1079, 1; Ex. 1049 ¶ 8. Members of
the Software Agents mailing list posted comments regarding the Turin draft
after it was released publicly. Exs. 1078, 1081, 1082; see Ex. 1049 ¶¶ 14–
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15. Dr. Finin was among those who shared their thoughts. See Ex. 1082;
Ex. 1049 ¶ 15. A posting after the Reston meeting included a public and
open link to access the Reston draft and invited comments from the mailing
list. Ex. 1083, 1; Ex. 1049 ¶ 17.
iii. Public Release of FIPA97
FIPA’s seventh meeting took place in Munich on October 6–10, 1997.
Ex. 1026 (Resolution of Munich meeting); Ex. 1049 ¶ 20. At this meeting,
FIPA incorporated final edits and comments and approved the FIPA 97
specification for publication. Ex. 1026, 1, 5; Ex. 1049 ¶ 20. The
specification as approved at the meeting was called “FIPA 97 ver. 1.0,” or
FIPA 97 Version 1.0. Ex. 1026, 5. Working groups for various parts of the
specification were given about one month to check for consistency and make
minor edits. Id. at 2; Ex. 1049 ¶ 20.
An “initial” version of FIPA 97 Version 1.0, approved at the Munich
meeting and dated October 10, 1997, was posted to the FIPA website,
housed at the time at http://drogo.cselt.stet.it/fipa. Ex. 1049 ¶¶ 20–21.
According to Dr. Finin, the specification documents were available online
and free for anybody to access by sometime in October 1997. Id. ¶ 21. On
November 18, 1997, an AgentWeb newsletter announced completion of
FIPA 97 Version 1.0 and its publication on the FIPA website. Ex. 1086, 1–
2; Ex. 1049 ¶ 21. The newsletter provided individual, direct links to the
seven parts of the specification on the FIPA website. Ex. 1086, 1–2. The
links were not password protected and were open to the public without a
requirement for secrecy or confidentiality. Ex. 1049 ¶ 21. As with the
earlier AgentWeb newsletters, the newsletter containing links to FIPA 97
Version 1.0 was sent to more than 1,300 subscribers. Id.
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Dr. Finin testifies that in late 1997, “a few weeks after the Munich
meeting,” he accessed the approved FIPA 97 Version 1.0 posted on the
FIPA website. Id. ¶¶ 20–21. He specifically recalls accessing the
documents in late 1997 to review the first major work product of FIPA and
to prepare for FIPA’s upcoming January 1998 meeting in Palo Alto, which
he attended. Id. ¶ 21 (citing Ex. 1074). Dr. Lieberman also testifies that he
recalls FIPA 97 Version 1.0 being publicly available on the FIPA website
throughout late 1997 and early 1998 and that he accessed it in late 1997 as a
member of the interested public. Ex. 1050 ¶ 146.
The release of FIPA 97 Version 1.0 was well publicized in the weeks
after the Munich meeting. Ex. 1049 ¶ 22. For example, on October 20,
1997, the EETimes featured an article reporting FIPA’s approval of the
FIPA 97 specification. Ex. 1095, 22; see Ex. 1049 ¶ 22. The article was
based on an interview with Leonardo Chiariglione, the president of FIPA.
Ex. 1095, 22. The article described the seven parts of the specification:
“The first three parts cover different aspects of agent behavior: agent
management; agent communication; and agent-software interaction. The
four remaining parts, which cover application areas, . . . are: personal travel
assistance; personal assistant; audio-visual entertainment and broadcast; and
network provision and management.” Id. After describing FIPA’s plans for
1998, including testing of FIPA 97 Version 1.0 to provide input for a further
round of standardization, the article referred readers to the FIPA website for
information regarding the released specification: “CSELT[4] maintains

4 Centro Studi e Laboratori Telecommunicazioni, Dr. Chiariglione’s
employer at the time. See Ex. 1095, 22.
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extensive information on FIPA’s activities at www.cselt.stet.it/fipa.”5 Id.
(emphasis omitted). It concluded with a quote from Dr. Chiariglione
regarding the specification’s public availability: “‘It is our policy to make
the standard freely available over the Internet,’ Chiariglione said. ‘FIPA
will retain the copyright but it will be free for others to use.’” Id.
The November-December 1997 issue of IEEE Internet Computing
also announced the release of the FIPA 97 specification: “The Foundation
for Intelligent Physical Agents, a non-profit organization established to
promote emerging agent-based applications, has released its first
specification. Named FIPA 97, the specification will provide a benchmark
for interoperable products.” Ex. 1096, 93; Ex. 1049 ¶ 22. The news brief
directed readers to the FIPA website for the text of the specification.
Ex. 1096, 93 (“The text is available at http://drogo.cselt.stet.it.fipa/.”6);
Ex. 1049 ¶ 22.
Sometime after the Munich meeting, FIPA also produced a hardcopy
book version of the FIPA 97 Version 1.0 specification to be sent to FIPA
members and various institutions and standards groups. Ex. 1049 ¶ 24; see
Ex. 1026, 1; Ex. 1063, 1 (Resolution of the Palo Alto meeting, Jan. 29,
1998). At least two copies of the book were available in libraries in
January 2019. Ex. 1049 ¶ 24; Ex. 1057, 1 (WorldCat catalog entry for “Fipa
specification : Version 1.0”); Ex. 1055 (cover page and table of contents of
each part in copy at library in Italy); Ex. 1056 (cover page and table of

5 The record suggests this website (http://www.cselt.stet.it/fipa) was a mirror
of the FIPA website (http://drogo.cselt.stet.it/fipa) in 1997. See Ex. 1049
¶ 22; Ex. 1095, 22; Tr. 94:11–14.
6 The URL provided in the article contains a typographical error. See
Ex. 1049 ¶ 22 (correcting the URL to http://drogo.cselt.stet.it[/]fipa/).
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contents of Part 1 in copy at library in Switzerland). Dr. Finin testifies that
the books contain the November 28, 1997, edited version of FIPA 97
Version 1.0, which “only made minor edits (mostly spelling and formatting)
over the October 10, 1997 version.” Ex. 1049 ¶ 25 (citing Ex. 1055, 5
(Part 2 “publication date” of November 28, 1997); Ex. 1056).
iv. Publications and Patents
In late 1997 and 1998, several papers reviewing and outlining the
FIPA 97 specification were published and presented at meetings. See
Ex. 1049 ¶¶ 26–30. A paper dated December 1997 memorializes a
presentation made to a meeting on Intelligent Agent Technology organized
by the EPSRC7 Community Club in Advanced Computing Techniques.
Ex. 1097, Cover (“Dickinson”);8 see Ex. 1049 ¶ 26. This paper outlines the
background and rationale for the creation of an agent interoperability
standard. Ex. 1097, 1–3. It also describes the development history of the
FIPA 97 specification, noting that FIPA’s work program “culminated in the
publication of an initial draft standard, FIPA 97, at the Munich meeting on
October 1997.” Id. at 3. Dickinson further provides that “[a]ll FIPA
documents and meeting outputs are publicly available on the web” at
“http://drogo.cselt.stet.it/fipa/,” and “comments and review have been sought
at each stage of the process.” Id. at 3, 7 n.9. The paper then describes the

7 “The Engineering and Physical Sciences Research Council (EPSRC) is the
main funding body for engineering and physical sciences research in the
UK.” Engineering and Physical Sciences Research Council,
epsrc.ukri.org/about (last visited Sept. 28, 2020).
8 Ian J. Dickinson, Agent Standards, HP Laboratories Bristol, HPL-97-156
(Dec. 1997).
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features of the specification’s three substantive technical sections, Parts 1–3.
Id. at 3–6.
Similarly, a 1998 paper titled “Industrial Applications of Multi-Agent
Technology” summarizes FIPA’s background and presents an overview of
the three technical parts (i.e., Parts 1–3) of FIPA 97 Version 1.0 released in
October 1997. Ex. 1099, 12–13 (“Steiner”);9 see Ex. 1049 ¶ 28. The Steiner
paper provides the FIPA website address and explains that the four
application parts (i.e., Parts 4–7) will be used in field trials to gather
information to be incorporated into a revised version of FIPA 97. Ex. 1099,
13 & n.1.
Likewise, a paper titled “FIPA — towards a standard for software
agents” appearing in the July 1998 issue of the BT Technology Journal
explains the motivation for an agent standard and provides an overview of
FIPA’s background and activities. Ex. 1100, 51–52 (“O’Brien”);10 see
Ex. 1049 ¶ 29. It then describes the different parts of the FIPA 97
Version 1.0 specification issued in October 1997. Ex. 1100, 51–52.11
Dr. Finin cites several other publications that reference FIPA’s
development of an agent communication standard in the 1997–98 timeframe.

9 Donald Steiner, Siemens AG, Industrial Applications of Multi-Agent
Technology (IEEE 1998).
10 P.D. O’Brien & R.C. Nicol, FIPA — towards a standard for software
agents, BT Tech. J. Vol. 16, No. 3 (July 1998).
11 Dr. Finin testifies that O’Brien provides public links to FIPA97. Ex. 1049
¶ 29. The copy of O’Brien entered into the record, however, appears to be
missing several pages, including one containing endnotes 10–12 that might
provide links to the FIPA website. See Ex. 1100, 52 (“FIPA97 (issued in
October 1997) [10–12] is the first output from FIPA covering part of the
requirements for an agent standard.”).
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Ex. 1049 ¶ 31 (citing Exs. 1027–29). Dr. Finin also identifies several patent
applications in the same timeframe that refer to FIPA’s agent
communication language. Id. ¶ 32 (citing Exs. 1030–33).
v. FIPA97 Website
Sometime in 1998, the FIPA website migrated from its original site
(http://drogo.cselt.stet.it/fipa) to fipa.org. Ex. 1049 ¶ 23; see also Ex. 1026
(Resolution of Munich meeting indicating FIPA’s plans for the “redesign of
a new FIPA home page”); Ex. 1065, 4 (Resolutions of the Durham meeting
in October 1998 indicating the website will be transferred to www.fipa.org).
The fipa.org website still exists today even though FIPA is no longer active
as a standalone organization. See Ex. 1049 ¶¶ 23, 48–49. The current FIPA
website maintains a repository of past FIPA documents, including meeting
notes, press releases, FIPA resolutions, and different versions of the FIPA
specification. Id. ¶ 49.
Dr. Finin testifies that the “initial” version of FIPA 97 Version 1.0
(i.e., the specification posted on the FIPA website on October 10, 1997)
“remained publicly accessible during all of FIPA’s future activities and is
still available on FIPA’s home page today.” Id. ¶ 21. According to
Dr. Finin, Exhibits 1006–1012 (collectively referred to as FIPA97) are
Parts 1–7 of FIPA 97 Version 1.0 as found on the current fipa.org website.
Id. Based on his personal knowledge, Dr. Finin further testifies that
Exhibits 1006–1012 are the “same version” and contain “the same
disclosures, content and information” as Parts 1–7 of FIPA 97 Version 1.0
that were publicly available on the FIPA website
(http://drogo.cselt.stet.it/fipa) on October 10, 1997, and which Dr. Finin
himself accessed in late 1997. Id. ¶¶ 21, 34. He also notes that although
Exhibit 1006 has a typographical error relating to the version number in the
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header of its odd pages,12 Exhibit 1006 is identical to the version of Part 1 of
FIPA 97 Version 1.0 that was released on October 10, 1007. Id. ¶ 21.
Additionally, as evidence that FIPA 97 Version 1.0 has been continuously
available on fipa.org since the website migration, Dr. Finin cites a set of
Internet Archive records beginning in 2000 showing where each part of that
version of the specification could be accessed. Id. (citing Ex. 1054).
Dr. Finin testifies that the original FIPA website,
http://drogo.cselt.stet.it/fipa, remained live for several years after the website
transitioned to fipa.org. Ex. 1049 ¶ 23. The Internet Archive Wayback
Machine contains an archived screen capture of the website
http://drogo.cselt.stet.it/fipa from December 1, 1998. See Ex. 1051;
Ex. 1049 ¶¶ 23, 54. According to Dr. Finin, the archived page shows that
the FIPA 97 specification was live and freely available on the FIPA website
home page at that time. Ex. 1049 ¶ 23; Ex. 1051, 1 (“FIPA has already
developed a seven-part specification called FIPA 97. Implementations of
FIPA 97 are undergoing field trials that will last until October 1998 when
version 2 of FIPA 97 will be produced.”); Ex. 1049 ¶ 23. The home page
provided links (i.e., “FIPA 97”) to actual specification documents, but those
links have not been maintained in the archive. Ex. 1049 ¶ 23. Dr. Finin
testifies that the screen capture from the Internet Archive is consistent with
the mirror of the former FIPA site hosted by Leonardo Chiariglione. Id. ¶ 51
(citing Ex. 1103 (http://leonardo.chiariglione.or/standards/fipa/)).
Dr. Chiariglione’s mirror is still available, and documents hosted on the

12 The header on odd pages reads “FIPA 1997 Part 1: Version 2.4.” E.g.,
Ex. 1006, 3.
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mirror are “accurate and complete copies of FIPA documents that were
available to FIPA members.” Id.
vi. Analysis
Petitioner argues that FIPA97 was a publicly accessible printed
publication as of October 10, 1997, when it was posted on the FIPA website.
Pet. 23; Pet. Reply 15–21. More specifically, Petitioner argues that
(1) FIPA 97 Version 1.0 was publicly accessible on October 10, 1997, and
(2) the version of the FIPA specification found in Exhibits 1006–1012,
referred to herein as FIPA97, is the same specification that was posted on
the FIPA website on October 10, 1997, and named FIPA 97 Version 1.0.
See, e.g., Pet. 23 (arguing FIPA 97 Version 1.0 was publicly accessible in
late 1997); Pet. Reply 15–17 (arguing that Exhibits 1006–1012 are the same
documents that were made public as FIPA 97 Version 1.0). Patent Owner
addresses the first contention when it argues the evidence does not show any
version of FIPA 97 Version 1.0 was available on the FIPA website. See,
e.g., Resp. 69. It also challenges the second contention when it argues
Petitioner has failed to show that Exhibits 1006–1012 are identical to the
version of the FIPA specification that allegedly was publicly accessible
before the critical date. See, e.g., id. at 62–63. In our analysis below, we
address the two questions in turn.
Considering all the facts and circumstances surrounding the
development of FIPA 97 Version 1.0 and its publication on the FIPA
website, we find that FIPA 97 Version 1.0 was disseminated or otherwise
made available to the extent that persons interested and ordinarily skilled in
the art, exercising reasonable diligence, could locate it. See Jazz Pharm.,
895 F.3d at 1355–56. First, the uncontested evidence shows that members
of the relevant public (i.e., persons of ordinary skill in the field of software
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agent-based technology) knew of the release of FIPA 97 Version 1.0 in late
1997, prior to the critical date. As detailed above, FIPA was open to
corporations and educational and governmental organizations without
restriction. Ex. 1006, iv. FIPA’s members included many industry leaders
whose employees attended FIPA meetings, including the October 1997
meeting in Munich where FIPA 97 Version 1.0 was approved for
publication. See id.; Ex. 1095, 22. FIPA meetings and activities were
publicized among the larger community of software agent researchers via
the AgentWeb website and its associated Software Agents mailing list and
AgentWeb newsletter, which had more than 1,300 subscribers. Ex. 1090, 5;
Ex. 1088, 1; Ex. 1087, 1; Ex. 1091, 1–2; Ex. 1092, 3; Ex. 1093, 2; Ex. 1094,
1–2; Ex. 1086, 1–2; see Ex. 1049 ¶¶ 8, 10, 12, 14, 17, 19. The newsletter in
particular informed subscribers of the development of the FIPA specification
during 1996 and 1997 and provided detailed information regarding the
release of FIPA 97 Version 1.0 in a November issue. Ex. 1086, 1–2. News
articles in periodicals published in late 1997 also announced that FIPA had
released and published FIPA 97 Version 1.0. Ex. 1095, 22; Ex. 1096, 93;
see Ex. 1049 ¶ 22. In addition, the record contains several papers published
in late 1997 and 1998, prior to the critical date, describing FIPA 97
Version 1.0 and its release in October 1997. See Ex. 1097, 1–7; Ex. 1099,
12–13; Ex. 1100, 51–52; Ex. 1049 ¶¶ 26–30; see also Ex. 1049 ¶¶ 31–32
(citing Exs. 1027–33 (other publications and patents referring to FIPA
specification)).
The evidence of record also demonstrates that members of the
relevant public, exercising reasonable diligence, could have located FIPA 97
Version 1.0 in late 1997 on the FIPA website, housed at the time at
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http://drogo.cselt.stet.it/fipa. FIPA published FIPA 97 Version 1.0 on its
website at the conclusion of the Munich meeting on October 10, 1997, or
shortly thereafter. See Ex. 1049 ¶ 20. In the several months leading up to
the Munich meeting, persons of ordinary skill in the art would have known
about the FIPA website through the widely distributed AgentWeb
newsletters and the Software Agents mailing list, which provided website
information or direct links to drafts of the specification and meeting
announcements and reports. See Ex. 1091, 1–2; Ex. 1092, 3; Ex. 1093, 2;
Ex. 1094; Ex. 1082, 1; Ex. 1083, 1. Therefore, people working in the field
would have been sufficiently familiar with FIPA’s activities and its website
to look for FIPA 97 Version 1.0 on the FIPA website when it was posted
after the Munich meeting. Indeed, both Dr. Finin, who was affiliated with
FIPA, and Dr. Lieberman, who worked in the software agent field, testify
that they accessed FIPA 97 Version 1.0 on the FIPA website in late 1997.
Id. ¶ 21; Ex. 1050 ¶ 146.
Moreover, the AgentWeb newsletter dated November 18, 1997,
provided a link to the FIPA website and individual links to the seven parts of
FIPA 97 Version 1.0 published on the website. Ex. 1086, 1–2; see Ex. 1049
¶ 21. Thus, that issue of the newsletter provided more than 1,300 interested
members of the public with direct access to FIPA 97 Version 1.0 at least as
of November 18, 1997.
News articles and papers published in late 1997 also provided readers
with the website address where FIPA 97 Version 1.0 could be found. See
Ex. 1095, 22; Ex. 1096, 93; Ex. 1097, 7 n.9. The news articles in particular
likely reached a very wide audience because they appeared in publications
directed to subject matter broader than agent-based technology. See
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Ex. 1095 (EETimes); Ex. 1096 (IEEE Internet Computing). The EETimes
article was dated October 20, 1997, suggesting that FIPA 97 Version 1.0 was
available on the FIPA website at least as of that date.
The undisputed evidence also demonstrates that FIPA 97 Version 1.0
was freely available on the FIPA website without a password or any other
restrictions and access was not subject to any requirement or expectation of
secrecy or confidentiality. See Ex. 1049 ¶ 21; Ex. 1095, 22; see also
Ex. 1006, iv (stating FIPA intended to make its results available to all
interested parties). This evidence further supports our finding that FIPA 97
Version 1.0 was publicly accessible in late 1997. See Jazz Pharm., 895 F.3d
at 1358–59; Voter Verified, Inc. v. Premier Election Solutions, Inc., 698 F.3d
1374, 1380–81 (Fed. Cir. 2012); MIT v. AB Fortia, 774 F.2d 1104, 1109
(Fed. Cir. 1985).
Patent Owner’s arguments, many of which attack pieces of evidence
individually, do not persuade us that Petitioner has failed to show that
FIPA 97 Version 1.0 was publicly accessible. First, Patent Owner argues
that no evidence shows the original FIPA website
(http://drogo.cselt.stet.it/fipa) existed prior to a December 1, 1998, Internet
Archive capture. Resp. 68 (citing Ex. 1051). To the contrary, much of the
documentary evidence from late 1997 and testimonial evidence identifies
that website or its mirror as the FIPA website during the relevant time
period. See Ex. 1049 ¶ ¶ 20–23; Ex. 1092, 3; Ex. 1093, 2; Ex. 1095, 22;
Ex. 1096, 93; Ex. 1097, 7 n.9. Notwithstanding the absence of an Internet
Archive capture for the website from a date prior to December 1998, we find
that, based on the totality of evidence in the record, the original FIPA
website existed in late 1997.
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Patent Owner also argues that none of the documents cited by
Petitioner provide active links to FIPA 97 Version 1.0 and therefore are
insufficient proof of public accessibility. Resp. 69; Sur-reply 30. Again,
based on the totality of evidence in the record, including but not limited to
the testimony of Dr. Finin that he accessed FIPA 97 Version 1.0 on the FIPA
website in late 1997, we find that FIPA 97 Version 1.0 was available on the
FIPA website at that time, notwithstanding the lack of active links today,
more than twenty years later. Patent Owner finds fault with Dr. Finin’s
testimony on this point because he does not claim to have used any of the
links in the AgentWeb newsletters to access FIPA 97 Version 1.0.
Sur-reply 30 (citing Ex. 1049 ¶ 21). Patent Owner, however, overlooks
Dr. Finin’s testimony that he was the founder and author of the AgentWeb
newsletter, implying that he created the links in the newsletter. See Ex. 1049
¶ 8. Therefore, based on Dr. Finin’s personal knowledge regarding the links
in the AgentWeb newsletter dated November 18, 1997, and the other
evidence corroborating his testimony, we find that FIPA 97 Version 1.0 was
available on the FIPA website in late 1997.
Patent Owner further asserts that, to the extent the Internet Archive
capture from December 1998 provides an operable download link, it links to
Version 2.0 of the FIPA 97 specification. Resp. 69 (citing Ex. 1051). It is
not surprising, however, that FIPA’s website in December 1998 provided
links to FIPA 97 Version 2.0, which FIPA released in October 1998 to
provide minor updates to two parts of the specification. See Ex. 1049 ¶ 35;
Ex. 1053, vi. In any event, the December 1998 Internet Archive capture at
least shows that the FIPA website was live at that time, which was prior to
the critical date. See Ex. 1049 ¶ 23 (citing Ex. 1051, 1).
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In its Sur-reply, Patent Owner argues for the first time that Petitioner
has not demonstrated that a person of ordinary skill in the art in 1997 could
have found FIPA 97 Version 1.0 using search tools or that the FIPA website
was indexed so the specification could be located. Sur-reply 27–28.
Further, Patent Owner argues that the existence of different FIPA websites at
various times would have made it even more difficult to find the correct
version of the FIPA specification without sufficient indexing or search tools.
Id. at 29.
Even if we consider this late argument, we find it unpersuasive. As
detailed above, the uncontested evidence shows that the address of the FIPA
website itself was widely known among those skilled in the art and that
FIPA routinely provided links to the FIPA specification on the website’s
home page. See Ex. 1095, 22; Ex. 1096, 93; Ex. 1097, 7 n.9; Ex. 1051, 1;
Ex. 1021, 1; Ex. 1025, 1. The November 1997 AgentWeb newsletter also
provided direct links to FIPA 97 Version 1.0. Ex. 1086, 1–2. Under these
circumstances, we find that a member of the interested public could have
found FIPA 97 Version 1.0 without search tools or indexing by using the
links in the AgentWeb newsletter or navigating to the well-known FIPA
website home page. We also find that the record, including Dr. Finin’s
testimony, satisfactorily explains the various FIPA websites and website
addresses over time and clearly identifies the FIPA website that was being
used in late 1997. See Ex. 1049 ¶¶ 22–23, 48–49, 51.
Having determined that FIPA 97 Version 1.0 was publicly accessible
on the FIPA website in late 1997, as early as October 10 and no later than
November 18, we turn to whether Exhibits 1006–1012 (collectively referred
to as FIPA97) contain the same version of the FIPA specification that was
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available on the FIPA website during that timeframe. Dr. Finin testifies that
Exhibits 1006–1012, documents available on the current FIPA website
(fipa.org) and identified as FIPA 97 Version 1.0, are the same version with
the same content as Parts 1–7 of FIPA 97 Version 1.0 that were released at
the FIPA Munich meeting on October 10, 1997, and were publicly available
on the FIPA website (http://drogo.cselt.stet.it/fipa) in late 1997. Ex. 1049
¶¶ 21, 34.
As an initial matter, the October 10, 1997, date on the cover pages of
several parts of FIPA97 supports Dr. Finin’s testimony that FIPA97 is the
same as FIPA 97 Version 1.0 as published on the FIPA website in late 1997.
See Ex. 1006, Cover; Ex. 1007, Cover; Ex. 1008, Cover; Ex. 1010, Cover;
Ex. 1012, Cover; see also Ex. 1009, Cover (Part 4 identifying a 1997
copyright date); Ex. 1011, Cover (Part 6 identifying a 1997 copyright date).
Patent Owner contends that Petitioner cannot rely on the date stamps or
copyright notices on Exhibits 1006–1012 to establish public accessibility
because they are hearsay. Resp. 61; Sur-reply 22–24. We agree with
Petitioner that Patent Owner has waived this argument because it did not
raise an objection on evidentiary grounds pursuant to 37 C.F.R.
§ 42.64(b)(1). See Pet. Reply 15–16. Furthermore, we agree with Petitioner
that the dates on the cover pages are not hearsay because they are evidence
tending to show that FIPA97 is identical to FIPA 97 Version 1.0, not
statements offered to show Exhibits 1006–1012 were published on a certain
date. See id. at 16 (citing Apple Inc. v. VirnetX Inc., IPR2016-01585,
Paper 32 at 58 (PTAB Feb. 20, 2018)).
Patent Owner also argues that Petitioner cannot rely on the cover page
dates alone as proof of the documents’ public accessibility. Sur-reply 23.
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The date stamps, however, are only part of the totality of evidence offered
by Petitioner to establish public accessibility. As such, they are relevant
evidence supporting a finding that FIPA97 was publicly accessible. See
Hulu, Paper 29 at 17–18 (citing Nobel Biocare, 903 F.3d at 1377).
Patent Owner argues that the existence of multiple versions of
FIPA 97 Version 1.0 undercuts Petitioner’s position and Dr. Finin’s
testimony that Exhibits 1006–1012 are the version of FIPA 97 Version 1.0
that was publicly accessible in late 1997. See Resp. 62–65; Sur-reply 25.
For example, Patent Owner points to Dr. Finin’s description of the version
released on October 10, 1997, as an “initial” version, after which final minor
edits were to be made. Resp. 63–64 (citing Ex. 2068, 86:11–15, 88:9–
89:25); see Ex. 1049 ¶ 21. Patent Owner cites an Internet Archive capture in
the record referring to “FIPA 97 specification ver. 1.0 (Reston meeting).”
Resp. 64–65 (citing Ex. 1105, 27). Patent Owner also cites evidence,
including Dr. Finin’s testimony, that a different version of FIPA 97
Version 1.0 was published in hardcopy books. Id. at 65 (citing Exs. 1055,
1056; Ex. 1049 ¶ 25 (stating that “FIPA printed the November 28, 1997,
edited version of the specification” in the books)).
Patent Owner argues that because these various versions of FIPA 97
Version 1.0 have not been substantively introduced into evidence so that the
differences can be ascertained, Petitioner has not shown that Exhibits 1006–
1012 are the version that was publicly accessible on the FIPA website in
late 1997. See Resp. 66–67. We disagree. Dr. Finin testifies that
Exhibits 1006–1012 are the same documents that were released at the
conclusion of the FIPA meeting in Munich on October 10, 1997, and were
made publicly available at the time. Ex. 1049 ¶¶ 21, 34. Other evidence of
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record corroborates Dr. Finin’s testimony and adequately explains the
multiple versions of the specification. See Pet. Reply 17–18. As set forth in
detail above, FIPA released a version of FIPA 97 Version 1.0 on October 10,
1997, and made it available on the FIPA website soon thereafter. See
Ex. 1049 ¶ 21; Ex. 1086, 1–2; Ex. 1095, 22; Ex. 1096, 93. It is clear from
the record that any earlier versions of the specification, such as the version
made available after the Reston meeting six months before FIPA 97
Version 1.0, were drafts made available for public comment. See Pet.
Reply 17; Ex. 1049 ¶¶ 16–18; Ex. 1024; Ex. 1061.
The record also shows that the version published in book form is a
later version, dated November 28, 1997, containing minor formatting and
clerical edits. See Ex. 1049 ¶ 25; Ex. 1055, 5. Petitioner does not rely on
the book version as a prior art reference or assert that it was publicly
accessible. See Pet. 23–24; Pet. Reply 17–18. The hardcopy book excerpts
in the record merely corroborate Dr. Finin’s testimony that FIPA’s activities
and release of the FIPA specification were known in the art. See Ex. 1049
¶ 24.
Patent Owner also points to the erroneous header on odd pages in
Exhibit 1006 as calling into question which version of the specification is in
Exhibits 1006–1012. Resp. 66. We credit Dr. Finin’s unrebutted testimony
that the header on some pages in Exhibit 1006 is a typographical error. See
Ex. 1049 ¶ 21. Patent Owner has not cited, nor do we see, evidence in the
record suggesting a FIPA 97 Version 2.4 was made publicly available. See
Resp. 66.
Patent Owner finds fault with Exhibits 1006–1012 because they were
obtained after the critical date and could not have been obtained from a
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website prior to the critical date. See Resp. 61–62; Sur-reply 21. In his
declaration, Dr. Finin testifies that Exhibits 1006–1012 are available on the
FIPA website today (i.e., fipa.org), and the earliest Internet Archive record
of the relevant website pages shows the documents were posted in 2000.
Ex. 1049 ¶ 21 (citing Ex. 1054). Patent Owner contends that in his
deposition Dr. Finin acknowledged that Exhibits 1006–1012 could have
been obtained from files saved in the Internet Archive between 2003 and
2004. Resp. 61–62 (citing Ex. 2068, 93:12–94:2, 96:7–20). In either case,
Patent Owner argues, the dates are after the critical date of the ’560 patent.
Id. at 62; Sur-reply 21. We agree with Petitioner, however, that the date
Exhibits 1006–1012 were obtained is immaterial if they are digital copies of
documents that are shown to have been publicly accessible before the critical
date. See Pet. Reply 16 (citing In re Wyer, 655 F.2d at 226–27).
Finally, Patent Owner argues that the testimony of Dr. Finin and
Dr. Lieberman is conclusory, unreliable, and uncorroborated and therefore
insufficient to establish public accessibility. Resp. 71–74; Sur-reply 20–22.
“[C]orroboration is required of any witness whose testimony alone is
asserted to invalidate a patent, regardless of his or her level of interest.”
Nobel Biocare, 903 F.3d at 1377–78 (quoting Finnigan Corp. v. ITC, 180
F.3d 1354, 1369 (Fed. Cir. 1999)). This corroboration requirement applies
when relying on witness testimony to establish public accessibility of a prior
art reference. See id. at 1377–81; Typeright Keyboard Corp. v. Microsoft
Corp., 374 F.3d 1151, 1158–60 (Fed. Cir. 2004). Corroborating evidence
may include documentary or testimonial evidence, and circumstantial
evidence may provide sufficient corroboration. Nobel Biocare, 903 F.3d at
1378. Determining whether testimony has been corroborated “involves an
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assessment of the totality of the circumstances including an evaluation of all
pertinent evidence.” Id.
We are not persuaded by Patent Owner’s argument regarding the
testimony of Dr. Finin and Dr. Lieberman. Dr. Finin’s testimony is based on
his personal knowledge as someone who was directly involved in FIPA’s
activities by submitting comments on draft specifications and attending
meetings, for example, and providing independent advice as a FIPA Fellow.
His testimony that FIPA approved FIPA 97 Version 1.0 at the Munich
meeting on October 10, 1997, and posted it to the FIPA website so that it
was publicly accessible is corroborated by the evidence in the record of the
facts and circumstances surrounding the development and release of the
specification as analyzed above. Dr. Lieberman’s testimony that as a
member of the interested public he accessed FIPA 97 Version 1.0 in late
1997 is corroborated by the same evidence.
As for Dr. Finin’s testimony, based on his personal knowledge, that
Exhibits 1006–1012 are the same as the version of FIPA 97 Version 1.0 that
was publicly accessible on the FIPA website in late 1997, we find it to be
credible and corroborated by other evidence of record. We are not
persuaded that Dr. Finin’s inability to recall many of the details of a
300-page specification more than twenty years after it was created
undermines his testimony. See Resp. 72–73. Furthermore, we find that the
evidence discussed above, including the identification of Exhibits 1006–
1012 on their cover pages or elsewhere as FIPA 97 Version 1.0 with a date
of October 10, 1997, corroborates Dr. Finin’s testimony that the version of
the specification in Exhibits 1006–1012 is the version that was publicly
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accessible on the FIPA website in late 1997, and not some other version of
the FIPA specification.
For these reasons, we find that a preponderance of the evidence shows
that Exhibits 1006–1012 are the version of FIPA 97 Version 1.0 released on
October 10, 1997, and posted on the FIPA website in late 1997. As
discussed above, a preponderance of the evidence shows that the October 10,
1997 version of FIPA 97 Version 1.0 was publicly accessible in late 1997.
Accordingly, we find that Petitioner has met is burden to show that FIPA97,
submitted as Exhibits 1006–1012 and relied on by Petitioner in its
unpatentability challenges, was publicly accessible prior to the critical date
of January 5, 1999, and therefore is available as prior art to the ’560 patent
under 35 U.S.C. § 102(a).
4. Obviousness over Kiss and FIPA97
Petitioner asserts claims 1–3, 11, and 48–60 are unpatentable as
obvious under 35 U.S.C. § 103 over the combination of Kiss and FIPA97.
Pet. 32–67. Petitioner argues, “FIPA97 provides a common
communications protocol and language (FIPA ACL) between the agents of
Kiss, and also adds its administrative functionality and exemplary practices
to the Kiss system.” Pet. 28. Petitioner explains, “[t]hese techniques are
used to implement the functionality described in Kiss, including facilitating
agent collaboration, agent registry, and inter-agent messaging.” Id. (citing
Ex. 1005, 3:32–36, 3:67–4:1, 6:67–7:1). Petitioner asserts, “[w]here the two
systems disclose analogous functionality, such as facilitating cooperation
and agent registry, their techniques are combined, as a Skilled Artisan would
understand that to be an efficient and common sense way to implement the
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combined system in order to obtain the benefits of both, and therefore be
motivated to do so.” Id. (citing Ex. 1003 ¶¶ 217–219).
5. Motivation to Combine Kiss and FIPA97
Petitioner argues the proposed combination of Kiss and FIPA97
would have been obvious for several reasons. Petitioner argues Kiss,
FIPA97, and the ’115 Patent are analogous art, because “each is directed to
the same field of endeavor, i.e., distributed computing environments
generally and architectures for communication and cooperation among
distributed electronic agents specifically.” Pet. 28 (citing e.g., Ex. 1001,
1:25–29; Ex. 1005, Abstract; Ex. 1007, Foreword, 1; Ex. 1003 ¶ 220).
Petitioner also argues, “FIPA97 and Kiss are reasonably pertinent to the
problem addressed by the ’115 Patent—e.g., the need for ‘flexible, fault-
tolerant, distributed problem solving’ using ‘agent-based technologies.’”
Pet. 28 (citing Ex. 1001, 4:34–40; Ex. 1005, 2:33–40; Ex. 1007, 1; Ex. 1003
¶ 221).
Petitioner argues,
[i]t would have been obvious to make this combination because
to do so would have been the arrangement of old elements (i.e.,
the functionality of FIPA97, and the system of Kiss) with each
performing the same function it had been known to perform
(communication between distributed agents (FIPA97v1));
cooperative task competition and problem solving (Kiss)) and
yielding no more than what one would expect from such an
arrangement (a system of distributed agents, able to
communicate to conduct cooperative task completion and
problem solving).
Pet. 29 (citing Ex. 1020, 2; Ex. 1046, 50; Ex. 1003 ¶ 222).
Petitioner also argues it
would have been obvious because a Skilled Artisan would have
known that agents, such as in Kiss, must use a common
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communications protocol, i.e., an inter-agent communication
language, and related management functionality, and therefore
would have been motivated to consider and employ one of the
available inter-agent communications languages and its related
functionality, and because doing so would have been a
convenient and efficient way to facilitate effective
communication between agents.
Pet. 29 (citing Ex. 1003 ¶ 223; Ex. 1020, 2; Ex. 1046, 50).
Petitioner further argues,
a Skilled Artisan would also have been motivated based on
earlier descriptions of KQML’s similar use of an inter-agent
communication language, their disclosure that ‘[t]here are
several levels at which agent-based systems must agree, at least
in their interfaces, in order to successfully interoperate:
Transport … Language … Policy … Architecture,’ and their
disclosure of the necessity of a robust inter-agent communication
language in a system like Kiss.
Pet. 29–30 (citing Ex. 1016, Abstract, 4, 29, 30; Ex. 1006, 7; Ex. 1007, 40–
42; Ex. 1005, Abstract; Ex. 1003 ¶¶ 224–226).
Petitioner argues it “would also have been obvious to try this
combination because the necessity of a common inter-agent communication
language was a known design need in a system such as Kiss, and there were
only a small number of identified, predictable solutions to that need, such as
FIPA ACL.” Pet. 30 (citing Ex. 1020, 2; Ex. 1046, 50; Ex. 1035, 1; Ex.
1003 ¶ 227).
Petitioner also argues,
[a] Skilled Artisan would have been further motivated to make
the combination because of the known advantages of FIPA97,
including that it specifies, ‘key agents necessary for the
management of an agent system, the ontology necessary for the
interaction between systems, and it defines also the transport
level of the protocols.’
Id. at 30 (citing Ex. 1035, 1; Ex. 1003 ¶ 229).
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Further, Petitioner argues:
a Skilled Artisan would have been motivated to make the
combination because FIPA97 represented a substantial attempt
to formulate an industry standard designed to encourage
interoperability and uniformity amongst agent systems. A
Skilled Artisan would have understood that agent systems that
complied with such a standard would be more likely to be
interoperable with other systems and would likely have more
resources available.
Id. at 30–31 (citing Ex. 1007, vii; Ex. 1047; Ex. 1003 ¶ 230).
Petitioner argues, “[a] Skilled Artisan would have been further
motivated to include the administrative functionality and exemplary
practices described in FIPA97 with Kiss because the description of such
functionality and practices in FIPA97 suggests that their use with the FIPA
ACL would be advantageous and workable.” Pet. 31. Petitioner also
argues, “[a] Skilled Artisan would also have been motivated to employ such
additional functionality and practices in the combined system in order to
obtain the full benefit of using FIPA ACL.” Id. (citing Ex. 1003 ¶ 231).
Finally, Petitioner argues, “a Skilled Artisan could have made the
combination cited above without undue experimentation including because
by January 1999 the components parts of this combination were well-known,
conventional technology and because others had combined FIPA97v1
technology with agent systems.” Pet. 31–32 (citing Ex. 1007; Ex. 1016; Ex.
1030; Ex. 1003 ¶ 228).
Patent Owner asserts that “Petitioner utterly defaults in offering any
reason to combine Kiss and FIPA97.” Resp. 116. Patent Owner argues that
Petitioner’s motivation to combine Kiss and FIPA97 suffers from “hindsight
bias” and that Petitioner “offers no reason or explanation that a person of
skill in the art looking at Kiss would be motivated to find a particular
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language with the characteristics of FIPA97’s ACL.” Id. Patent Owner also
argues that Petitioner does not “explain what ‘efficiencies’ a person of
ordinary skill in the art would be looking for” and “fails to identify how the
combination could be achieved.” Id. at 116–117.
Patent Owner argues that “[e]ven if the combination of the Kiss meta-
agent and the FIPA97 Directory Facilitator had disclosed the claimed
facilitator agent (it did not), Petitioner fails to offer any reason that a person
of ordinary skill in the art would have been motivated to do so.” Id. at 79.
Patent Owner argues, “Petitioner offers no reason that the meta-agent of Kiss
would need any capability offered by FIPA97.” Id. “Indeed,” Patent Owner
argues, “Kiss itself already includes a registry.” Id.
Patent Owner also argues that the “Petition says nothing” about how
to combine FIPA97’s Directory Facilitator and Kiss’ meta-agent. Id. at 80.
Patent Owner argues the “two architectures look quite different,” and that
“Petitioner offers no articulation of how to add [FIPA Directory Facilitators]
to any of the Kiss layers.” Id. at 81.
Patent Owner argues:
If Kiss’s meta agents were replaced by or combined with FIPA’s
[Directory Facilitators] in some way, like the Petition suggests,
the directory service provided by the [Directory Facilitators]
would clash with the duplicate and potentially conflicting
services provided by the existing agent service layer. Other
agents in Kiss would either be unable to obtain the registry
services or would receive duplicate and/or contradictory
answers, resulting in an inoperative device.
Id. at 82 (citations omitted).
Patent Owner also argues that Petitioner’s combination of FIPA97,
Kiss and Cohen “is emblematic of hindsight bias” because Dr. Lieberman
“picks and chooses elements” and “superimposes them into one figure in an
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attempt to ‘show’ the combination.” Id. at 84. Patent Owner argues that
“simply drawing in block diagrams with terminology from other references
into one cobbled diagram is insufficient as a matter of law without any
explanation of how such a combination could be achieved or, indeed, why.”
Id. at 84–85.
In Reply, Petitioner argues that Patent Owner “ignores the several
pages of analysis supported by expert testimony (including citations to
evidence in the prior art) articulating the rational underpinning of the
combination” of Kiss and FIPA97. Reply 30 (citing Pet. 28–32). Petitioner
argues that “while there was no requirement to show that a Skilled Artisan
would search for ‘a particular language with the characteristics of FIPA97’s
ACL,’” (Resp. 116), the Petition does explain that “agents, such as in Kiss,
must use a common communications protocol,” so a Skilled Artisan “would
have been motivated to ‘employ one of the available inter-agent
communications languages . . . because doing so would have been a
convenient and efficient way to facilitate effective communication between
agents.’” Reply 30–31 (citing Pet. 29–30; Ex. 1003 ¶ 223).
Petitioner also argues that Patent Owner’s criticism that “Petitioner
fails to identify how the combination could be achieved,” (Resp. 117), is
“legally irrelevant” (citing In re Keller, 642 F.2d 413, 425 (CCPA 1981),
and “also ignores the detailed description in the Petition (supported by Dr.
Lieberman) that demonstrates how the combination would work.” Reply 31
(citing Pet. 28–32; Ex. 1003 ¶¶ 217–219; Ex. 1005, Figs. 4–6, 21
(annotated)). Petitioner points out that:
[t]he Petition explains, for example, that FIPA97 provides a
common communications protocol and language (FIPA ACL)
between the agents of Kiss, and also adds its administrative
functionality and exemplary practices to the Kiss system, as
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described with specificity below. These techniques are used to
implement the functionality described in Kiss, including
facilitating agent collaboration, agent registry, and inter-agent
messaging, (Ex. 1005, 3:32–36, 3:67-4:1, 6:67–7:1), as well
adding functionality that is disclosed in FIPA97.
Reply 34.
In its Sur-reply, Patent Owner argues that Petitioner’s evidence of a
motivation to combine are simply “[p]ages of boilerplate language” or
exhibit “ex post reasoning colored by hindsight.” Sur-reply 58, 62. Patent
Owner argues that the FIPA97 and Kiss protocols are “different” and
“mutually exclusive” and that “Petitioner offers no argument or evidence
relating to how these completely different components would be
reconciled.” Id. at 59–61. Patent Owner argues that FIPA97 “discouraged
interoperability between different and incompatible systems.” Id. at 61.
Patent Owner also argues that “[t]he Board must disregard” portions
of Petitioner’s Reply, which discuss “a series of four figures from Dr.
Lieberman’s declaration,” “because it constitutes new argument.” Id. at 63.
Patent Owner argues that “the Petition must contain a ‘full statement of the
reasons for the relief requested’” and “cannot simply incorporate by
reference its expert’s declaration.” Id. (citing 37 C.F.R § 42.6(a)(3)).
In identifying a reason that would have prompted a person of ordinary
skill in the relevant field to combine the prior art teachings, the Petitioner
“must show some articulated reasoning with some rational underpinning to
support the legal conclusion of obviousness.” KSR Int’l Co. v. Teleflex Inc.,
550 U.S. 398, 418 (2007). A reason to combine teachings from the prior art
“may be found in explicit or implicit teachings within the references
themselves, from the ordinary knowledge of those skilled in the art, or from
the nature of the problem to be solved.” WMS Gaming Inc. v. Int’l Game
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Tech., 184 F.3d 1339, 1355 (Fed. Cir. 1999) (citing In re Rouffet, 149 F.3d
1350, 1357 (Fed. Cir. 1998)).
Here, Petitioner explains that:
FIPA97 provides a common communications protocol and
language (FIPA ACL) between the agents of Kiss, and also adds
its administrative functionality and exemplary practices to the
Kiss system, as described with specificity below. These
techniques are used to implement the functionality described in
Kiss, including facilitating agent collaboration, agent registry,
and inter-agent messaging, Ex. 1005, 3:32–36, 3:67–4:1, 6:67–
7:1, as well adding functionality that is disclosed in FIPA97.
Where the two systems disclose analogous functionality, such as
facilitating cooperation and agent registry, their techniques are
combined, as a Skilled Artisan would understand that to be an
efficient and common sense way to implement the combined
system in order to obtain the benefits of both, and therefore be
motivated to do so.
Pet. 27–28 (citing Ex. 1003 ¶¶ 217–219).
Petitioner provides persuasive evidence that Kiss and FIPA97 are
analogous art because “each is directed to the same field of endeavor, i.e.,
distributed computing environments generally and architectures for
communication and cooperation among distributed electronic agents
specifically.” Pet. 28 (citing Ex. 1001, 1:25–29; Ex. 1005, Abstract; Ex.
1007, Foreword, 1; Ex. 1003 ¶ 220). Petitioner also provides persuasive
evidence that FIPA97 and Kiss “are reasonably pertinent to the problem
addressed by the 115 Patent—e.g., the need for ‘flexible, fault-tolerant,
distributed problem solving’ using ‘agent-based technologies.’” Pet. 28
(citing Ex. 1001, 4:34–40; Ex. 1005, 2:33–40; Ex. 1007, 1; Ex. 1003 ¶ 221).
Petitioner argues persuasively that
[i]t would have been obvious to make this combination because
to do so would have been the arrangement of old elements (i.e.,
the functionality of FIPA97, and the system of Kiss) with each
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performing the same function it had been known to perform
(communication between distributed agents (FIPA97v1));
cooperative task competition and problem solving (Kiss)) and
yielding no more than what one would expect from such an
arrangement (a system of distributed agents, able to
communicate to conduct cooperative task completion and
problem solving).
Pet. 29 (citing Ex. 1020, 2; Ex. 1046, 50; Ex. 1003 ¶ 222).
Petitioner also argues, and we agree, that it
would have been obvious because a Skilled Artisan would have
known that agents, such as in Kiss, must use a common
communications protocol, i.e., an inter-agent communication
language, and related management functionality, Ex. 1020, 2;
Ex. 1046, 50, and therefore would have been motivated to
consider and employ one of the available inter-agent
communications languages and its related functionality, and
because doing so would have been a convenient and efficient
way to facilitate effective communication between agents.
Pet. 29 (citing Ex. 1003 ¶ 223).
Petitioner goes on to argue that “a Skilled Artisan would also have
been motivated based on earlier descriptions of KQML’s similar use of an
inter-agent communication language,” (citing Ex. 1016, Abstract) and their
disclosure that “[t]here are several levels at which agent-based systems must
agree, at least in their interfaces, in order to successfully interoperate:
Transport … Language … Policy … Architecture,” (citing Ex. 1016, 4, 29,
30) as well as their disclosure of “the necessity of a robust inter-agent
communication language in a system like Kiss.” Pet. 29–30 (citing Ex.
1006, 7; Ex. 1007, 41, 4–-42; Ex. 1005, Abstract; Ex. 1003 ¶¶ 224–226).
Petitioner further argues that “[s]uch a combination would also have
been obvious to try this combination because the necessity of a common
inter-agent communication language was a known design need in a system
such as Kiss,” (citing Ex. 1020, 2; Ex. 1046, 50) and there were only a small
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number of identified, predictable solutions to that need, such as FIPA ACL.”
Pet. 30 (citing Ex. 1035, 1; Ex. 1003 ¶ 227).
Petitioner goes on to argue that a “Skilled Artisan” would also have
been motivated to combine FIPA97 and Kiss in the manner described in the
Petition “because of the known advantages of FIPA97, including that it
specifies, ‘key agents necessary for the management of an agent system, the
ontology necessary for the interaction between systems, and it defines also
the transport level of the protocols’” (citing Ex. 1035, 1; Ex. 1003 ¶ 229),
and “because FIPA97 represented a substantial attempt to formulate an
industry standard designed to encourage interoperability and uniformity
amongst agent systems.” Pet. 30 (citing Ex. 1007, vii; Ex. 1047).
Petitioner also explains that:
[a] Skilled Artisan would have been further motivated to include
the administrative functionality and exemplary practices
described in FIPA97 with Kiss because the description of such
functionality and practices in FIPA97 suggests that their use with
the FIPA ACL would be advantageous and workable. A Skilled
Artisan would also have been motivated to employ such
additional functionality and practices in the combined system in
order to obtain the full benefit of using FIPA ACL.
Pet. 31 (citing Ex. 1003 ¶ 231).
In light of the reasons and the explanations Petitioner provides that
would have motivated a person of ordinary skill in the art to combine the
teachings of FIPA97 and Kiss in the manner Petitioner describes, Patent
Owner’s argument that “Petitioner utterly defaults in offering any reason to
combine Kiss and FIPA97” (see Resp. 116) (emphasis added), is directly
contrary to the evidence of record and is unpersuasive. So too is Patent
Owner’s argument that “Petitioner fails to offer any reason that a person of
ordinary skill in the art would have been motivated” to combine “the Kiss
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meta-agent and the FIPA97 Directory Facilitator.” See Resp. 79 (emphasis
added).
Patent Owner also argues that Petitioner “offers no reason or
explanation that a person of skill in the art looking at Kiss would be
motivated to find a particular language with the characteristics of FIPA97’s
ACL.” Id. at 116. Patent Owner’s argument, however, is misplaced. The
test for obviousness is not whether a person of ordinary skill in the art
“looking at Kiss would be motivated to find a particular language with the
characteristics of FIPA97’s ACL.” Rather, “[u]nder the correct
[obviousness] analysis, any need or problem known in the field of endeavor
at the time of invention and addressed by the patent can provide a reason for
combining the elements in the manner claimed.” KSR Int’l Co. v. Teleflex
Inc., 550 U.S. 398, 420 (2007).
Here, Petitioner provides persuasive evidence and argument that
FIPA97 and Kiss “are reasonably pertinent to the problem addressed by the
115 Patent—e.g., the need for ‘flexible, fault-tolerant, distributed problem
solving’ using ‘agent-based technologies.’” Pet. 28 (citing Ex. 1001, 4:34–
40; Ex. 1005, 2:33–40; Ex. 1007, 1; Ex. 1003 ¶ 221). This evidence
includes the ’115 patent’s observation that:
[a]gent-based systems have shown much promise for flexible,
fault-tolerant, distributed problem solving. Several agent-based
projects have helped to evolve the notion of facilitation.
However, existing agent-based technologies and architectures
are typically very limited in the extent to which agents can
specify complex goals or influence the strategies used by the
facilitator.
Ex. 1001, 4:34–40, as well as Kiss’ observation that “a need exists for a
knowledge management system for dynamic, distributed problem-solving
systems. Ex. 1005, 2:39–40. Indeed, Dr. Lieberman notes that the FIPA97
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specification “defines a language and supporting tools, such as protocols, to
be used by intelligent software agents to communicate with each other,” and
that “the terms used and the mechanisms used [by FIPA97] support such a
higher-level, often task based, view of interaction and communication.” Ex.
1003 ¶ 221. This evidence support’s Petitioner’s position that a person of
ordinary skill in the art at the time of the claimed invention would have
combined FIPA97 and Kiss in the manner described in the Petition to
provide a flexible, fault-tolerant, distributed problem solving system using
agent-based technologies.
Patent Owner further argues that “Petitioner offers no reason that the
meta-agent of Kiss would need any capability offered by FIPA97.” Resp.
79. Patent Owner argues that the “Petition says nothing” about how to
combine FIPA97’s Directory Facilitator and Kiss’ meta-agent. Id. at 80.
Patent Owner makes the observation that the “two architectures look quite
different,” and that “Petitioner offers no articulation of how to add [FIPA
Directory Facilitators] to any of the Kiss layers.” Id. at 81. Patent Owner
argues:
If Kiss’s meta agents were replaced by or combined with FIPA’s
[Directory Facilitators] in some way, like the Petition suggests,
the directory service provided by the [Directory Facilitators]
would clash with the duplicate and potentially conflicting
services provided by the existing agent service layer. Other
agents in Kiss would either be unable to obtain the registry
services or would receive duplicate and/or contradictory
answers, resulting in an inoperative device.
Id. at 82 (citations omitted).
We note that, “the [obviousness] analysis need not seek out precise
teachings directed to the specific subject matter of the challenged claim, for
a court can take account of the inferences and creative steps that a person of
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ordinary skill in the art would employ.” KSR, 550 U.S. at 418 (2007). The
test for obviousness is not whether the features of a secondary reference may
be bodily incorporated into the structure of the primary reference; nor is it
that the claimed invention must be expressly suggested in any one or all of
the references. Rather, the test is what the combined teachings of the
references would have suggested to those of ordinary skill in the art. In re
Keller, 642 F.2d 413, 425 (CCPA 1981).
Here, contrary to Patent Owner’s arguments, Petitioner provides a
description in the Petition (supported by Dr. Lieberman’s Declaration) that
explains how a person of ordinary skill in the art would combine FIPA97
and Kiss. See, e.g., Pet. 28–32; Ex. 1003 ¶¶ 217–219. For example, the
Petition explains that “FIPA97 provides a common communications
protocol and language (FIPA ACL) between the agents of Kiss, and also
adds its administrative functionality and exemplary practices to the Kiss
system.” Pet. 27–28. The Petition also explains that “[t]hese techniques are
used to implement the functionality described in Kiss, including facilitating
agent collaboration, agent registry, and inter-agent messaging . . . as well
adding functionality that is disclosed in FIPA97.” Id. at 28 (citing Ex. 1005,
3:32–36, 3:67–4:1, 6:67–7:1) (italicized emphasis added).
Petitioner’s proffered combination of FIPA97 and Kiss is amply
supported by Dr. Lieberman’s testimony. For example, Dr. Lieberman
explains that:
in the combination of Kiss with FIPA97, the “interagent abstract
communications facilities” of Kiss, EX1005, 3:32-36, would use
the inter-agent communication language of FIPA97 to, for
example, “negotiate with each other, conduct joint planning, and
to collaborate in the execution of planned tasks,” EX1005, 3:32-
36. Additionally, the Agent Service Layer and meta-agent of Kiss
would be implemented using the FIPA97 Agent Management
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System (“FIPA AMS”) and the functionality of the FIPA
Directory Facilitator, described in EX1006. Thus, the
“capabilities, interests, and attributes for the knowledge
modules” EX1005, 6:67-7:1, as stored in the agent registry of
Kiss, and the meta agent of Kiss, would be implemented with the
directory facilitator functionality of FIPA97. Therefore, FIPA
AMS would be used to provide a “scalable and modular,”
EX1005, 3:67-4:1, inter-agent management system and agent
registry for the distributed agents of Kiss. Further, the
combination of FIPA97 and Kiss would be informed by and
include the exemplary practices described in the informative
sections of FIPA97 (i.e, Parts 4-7). The following are further
annotated figures from Kiss representing exemplary depictions
of the combined Kiss/FIPA97 system.
Ex. 1003 ¶ 219 (citing Ex. 1005, Figs. 4–5, 6, 21) (italicized emphasis
added).
Dr. Lieberman provides an annotated version of Kiss’ Figure 21,
shown below, illustrating how FIPA97’s Directory Facilitator (DF) and
Facilitating Agent (FA) would be incorporated into Kiss’ Knowledge
Management System.

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Petitioner’s annotated version of Kiss’ Figure 21, shown above,
depicts how FIPA97’s Directory Facilitator (DF) and Facilitating Agent
(FA) would be incorporated into the User Interface Layer, Meta-Agent
Layer, and Knowledge Agent Layer of Kiss’ Knowledge Management
System connected to a distributed environment such as the Internet. See Ex.
1003, ¶¶ 217–219, pgs. 132–135; Ex. 1005, 10:55–12:28, 14:31–36, Figs. 4–
6, 8, 21. Patent Owner’s arguments that the Petition “says nothing” about
how to combine FIPA97’s Directory Facilitator and Kiss’ meta-agent and
offers “no articulation” of how to add a Directory Facilitator to any of the
Kiss layers is simply contrary to the evidence of record. Similarly, Patent
Owner’s arguments that the FIPA97 and Kiss protocols are “mutually
exclusive” and that FIPA97 “discouraged interoperability” between systems
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is not adequately supported by the record and is unpersuasive. See Sur-reply
59–61.
Patent Owner’s argument in its Sur-reply that we must “disregard”
portions of Petitioner’s Reply discussing Dr. Lieberman’s annotated
illustrations because it constitutes “new argument” is also unpersuasive. See
Sur-reply 63. The identified portions of Petitioner’s Reply (pgs. 32–33)
respond directly to Patent Owner’s argument in its Response that “Petitioner
fails to identify how the combination could be achieved,” and do not
constitute new argument. See Reply 31 (citing Response 117). Similarly,
Patent Owner’s argument that Dr. Lieberman’s annotated illustrations should
be disregarded because they do not appear directly in the Petition is
misplaced. See Sur-reply 63. 37 C.F.R § 42.6(a)(3), cited by Patent Owner,
prohibits “arguments” from being incorporated by reference from one
document into another document. Dr. Lieberman’s Declaration (Ex. 1003)
is testimonial evidence provided by a witness in support of the Petition—it is
not “argument.”
Finally, Patent Owner argues Petitioner’s motivation to combine Kiss
and FIPA97 suffers from “hindsight bias” (Resp. 116) and that Petitioner’s
combination of FIPA97, Kiss and Cohen “is emblematic of hindsight bias”
because Dr. Lieberman “picks and chooses elements” and “superimposes
them into one figure in an attempt to ‘show’ the combination.” Id. at 84. In
particular, Patent Owner argues that “simply drawing in block diagrams with
terminology from other references into one cobbled diagram is insufficient
as a matter of law without any explanation of how such a combination could
be achieved or, indeed, why.” Id. at 84–85.
We note that “[a]ny judgment on obviousness is in a sense necessarily
a reconstruction based upon hindsight reasoning, but so long as it takes into
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account only knowledge which was within the level of ordinary skill at the
time the claimed invention was made and does not include knowledge
gleaned only from applicant's disclosure, such a reconstruction is proper.”
In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971).
Here, Petitioner provides persuasive evidence that a person of
ordinary skill in the art at the time of the invention would have been
motivated to combine FIPA97’s communications protocol and inter-agent
communication language (FIPA ACL) between the agents of Kiss, adding its
administrative functionality and practices to the Kiss system. See, e.g., Pet.
27–31; Ex. 1003 ¶¶ 217–232. This is not evidence of hindsight bias. Patent
Owner does not identify, and we do discern, any particular knowledge used
by Petitioner in its combination of FIPA97 and Kiss that was gleaned from
the ’115 patent’s disclosure and was not within the level of ordinary skill in
the art at the time of the invention.
Patent Owner’s criticism of Dr. Lieberman’s annotation of Kiss’
Figure 8 (see Resp. 84–85; Ex. 1003, 130) is also misplaced. As Dr.
Lieberman explains, the annotated illustration shows how a person of
ordinary skill in the art at the time of the invention would have combined
FIPA97’s ACL messaging, Directory Facilitator, and Facilitator Agent with
Kiss’ Agent Service Layer. See Ex. 1003, 130, Fig. 8. Moreover, Dr.
Lieberman persuasively explains why a person of ordinary skill in the art
would have been motivated to combine the teachings of FIPA97 and Kiss in
the manner described. See Ex. 1003 ¶¶ 217–231.
We find that Petitioner has shown persuasively by a preponderance of
the evidence that one of ordinary skill in the art at the time of the invention
would have been motivated to combine the teachings of FIPA97 and Kiss in
the manner proffered by Petitioner.
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6. Nonobviousness
In determining whether the challenged claims would have been
obvious as Petitioner alleges, we must also weigh secondary considerations
of nonobviousness, such as commercial success, long-felt but unmet need,
failure of others, and unexpected results. KSR, 550 U.S. at 406. A nexus is
required between the merits of the claimed invention and any objective
evidence of nonobviousness if that evidence is to be given substantial weight
in reaching a conclusion on obviousness. Stratoflex, Inc. v. Aeroquip Corp.,
713 F.2d 1530, 1539 (Fed. Cir. 1983). Evidence of secondary
considerations is only significant if there is a nexus with respect to the
claimed invention. Ormco Corp. v. Align Tech., Inc., 463 F.3d 1299, 1311–
12 (Fed. Cir. 2006).
Nexus is a legally and factually sufficient connection between the
objective evidence and the claimed invention, such that the objective
evidence should be considered in the determination of nonobviousness. See
Demaco Corp. v. F. Von Langsdorff Licensing Ltd., 851 F.2d 1387, 1392
(Fed. Cir. 1988). For instance, commercial success is relevant if it flows
from the merits of the claimed invention. Sjolund v. Musland, 847 F.2d
1573, 1582 (Fed. Cir. 1988). The burden of showing nexus is on the patent
owner. In re Huang, 100 F.3d 135, 139–40 (Fed. Cir. 1996). Objective
evidence of nonobviousness also must be commensurate in scope with the
claims for which the evidence is offered to support. In re Kulling, 897 F.2d
1147, 1149 (Fed. Cir. 1990).
Patent Owner contends that objective indicia of nonobviousness
confirms the novelty of the ’115 patent. Resp. 119–145. Patent Owner
argues that industry praise for a software application known as “Siri,”
“which was first made available for download to iPhone users on Apple,
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Inc.’s App Store on February 4, 2010” (id. at 121), “bears a nexus to the
claims of the ’156 Patent” (id. at 141).13 Patent Owner argues that industry
praise for the “personal context awareness and service delegation ‘technical
components’ of the Siri application are made possible by the [] claim
limitations of independent claim 1 of the ’115 Patent.” Id. at 136.
Patent Owner asserts that “[t]he ’115 Patent was based on SRI
International’s development of version 2 of the Open Agent Architecture
(‘OAA’).” Id. at 135 (citing Ex. 2032; Ex. 1001). For support, Patent
Owner relies on Exhibit 2054, an SRI web page, which states, “SRI
developed OAA® software, which is designed with intelligent ‘agents’ that
track human interactions and work processes to streamline electronic and
computer interchange.” Resp. 135 (quoting Ex. 2054). Patent Owner
further asserts that “[a]fter version 2 of OAA was developed, SRI
International spun out Siri, Inc. as an SRI venture, where the Siri application
was created based on an OAA groundwork.” Resp. 135 (quoting Ex. 2054
(“OAA laid the groundwork for the DARPA-funded CALO project, from
which Siri, the first virtual personal assistant, was born. Siri was spun out
into an SRI venture that Apple acquired from SRI.”). Apple Inc. apparently
acquired Siri, Inc. in April 2010, approximately two months after the Siri
application’s initial release.14 Resp. 10, 121, 135.
Patent Owner asserts that “Petitioner proposed a combination of Kiss
with FIPA97, which relies on FIPA97 as teaching a common

13 Although Patent Owner refers to the ’156 Patent here, we assume this is a
mistake and that Patent Owner actually meant to refer to the patent at issue
in this proceeding, the ’115 patent.
14 We note for the record that the filing date for the ’115 patent is Jan. 5,
1999, approximately ten years prior to the Siri application’s initial release.
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communications and protocol language that is combined with Kiss’s
teachings of electronic agents and their general functions and operations.”
Resp. 134 (citing Paper 12, 45). To support this assertion, Patent Owner
supposedly quotes from the Decision on Institution in this proceeding as
follows:
In its proposed combination of Kiss with FIPA97, Petitioner
relies on Kiss as teaching electronic agents and their general
functions and operations, including agent collaboration, agent
registry, and interagent messaging. Pet. 28. Petitioner
acknowledges, however, Kiss does not disclose an inter-agent
communication language and relies on FIPA97 to teach a
common communications protocol and language (FIPA ACL),
which is combined with the teachings of Kiss to provide a
communication language for inter-agent communication
between the agents of Kiss. Id.
Resp. 134 (citing Paper 12, 45). However, we cannot locate this supposed
quotation from the Decision on Institution in this proceeding on page 45, or
on any other page of the Decision, for that matter. See Paper 12, 45.
Nonetheless, Patent Owner argues a “nexus between the evidence of
industry praise of the Siri application [] and the Challenged Claims can be
shown if the industry praise has a nexus to the combination of these
(allegedly) prior art features, i.e., the teachings of electronic agents and their
general functions and operations in Kiss and the common communications
protocol and language of FIPA97.” Resp. 134. Patent Owner argues that its
“evidence of industry praise [] satisfies the nexus requirement, as it shows
praise for the Siri application’s integration of personal context awareness
into a service-delegating virtual personal assistant.” Resp. 136; see also id.
at 122–133. Patent Owner also argues that “industry journalists recognized
that the Siri application filled an unmet need for a true virtual personal
assistant.” Id. at 141; see also id. at 141–145.
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To establish a nexus between claim 1 of the ’115 patent and the Siri
application, Patent Owner provides the following chart. Id. at 136–138.
Patent Owner relies, in significant part, on the opinion of its declarant, Dr.
Medvidovic, to establish a nexus between the Siri application and the claims
of the ’115 patent. See Ex. 2032 ¶¶ 205–229, App. A, 1–32.

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Patent Owner argues that “the Siri application’s integration of
personal context awareness is made possible because of the claimed inter-
agent language limitations.” Resp. 138 (citing Ex. 2032 ¶ 222). Patent
Owner explains that “[b]y having a layer of conversational protocol that has
parameter lists, the ’115 Patent describes how agents can then use the
parameters in the parameter lists to provide feedback or advice to agents
who directly, or indirectly through the facilitating agent, receive the service
request.” Resp. 138. For example, Patent Owner explains that a “requesting
agent can utilize such a parameter to provide context on a user’s preference
to the facilitator agent and/or the tasking agents. Id. at 139 (citing Ex. 2032
¶ 224). Patent Owner argues that “[t]his same functionality of being able to
include individual preferences, for example, was described by Siri, Inc. as
representing personal context awareness.” Resp. 140 (citing Ex. 2040, 2).
Patent Owner also argues that:
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the Siri application’s service delegation corresponds to the
claimed dynamic interpretation limitations. Siri, Inc. described
the service delegation feature of the Siri application as including
“an assistant [that] can reason about what specific set of
resources or services would best be combined to help you
accomplish a particular task.” This is precisely what is claimed
in the dynamic interpretation limitations, e.g., “constructing a
goal satisfaction plan . . . [including] a suitable delegation of sub-
goal requests to best complete the requested service request-by
using reasoning.”
Resp. 140 (citing Ex. 2032 ¶ 221).
Petitioner argues that Patent Owner’s “secondary considerations
position rests primarily on an unsubstantiated, conclusory opinion that
certain aspects of the ’115 Patent are embodied in the Apple product ‘Siri.’”
Reply 82. Petitioner argues that as “Dr. Medvidovic conceded, the evidence
he relied on is ‘circumstantial,’ or a ‘suggestion.’” Id. (citing Ex. 1129,
147:12-15). Petitioner argues that Dr. Medvidovic “never reviewed the Siri
source code, (Ex. 1129, 146:20-147:6), and indeed never even asked to
review that source code (Ex. 1129, 147:22-148:9).” Reply 82–83. Petitioner
argues,
[t]he failure to review the code is fatal, because [Dr. Medvidovic]
further testified that an “agent”—an element in every claim—is
a “piece of functionality that is capable of performing certain
tasks that is embodied in at least for a software engineer a clearly
identifiable body of code,” and that to distinguish an “agent”
from any other software he “would have to look inside the
code.”
Id. at 83 (quoting Ex. 1129, 9:14-11:8).
Petitioner faults Patent Owner for not “not seek[ing] that code through
a motion for additional discovery or other means, nor did [Petitioner] seek
any other objective evidence (such as specifications) to support its
assertions.” Reply 83. Petitioner also faults Patent Owner for not seeking
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the testimony of Mr. Adam Cheyer, one of the named co-inventor’s on the
’115 patent and a co-founder of Siri, Inc., on this topic, even though Mr.
Cheyer’s testimony was apparently obtained in a related proceeding. Id. at
83–84 (citing Ex. 2034, 58:15-63:16; Ex. 1127); see also Resp. 121. During
the Oral Hearing in this proceeding, counsel for Patent Owner was asked
about this potential source of evidence:
12 JUDGE TROCK: Counsel, this is Judge Trock
13 again.
14 Do you have any evidence from Mr. Cheyer
15 that this Siri version that you're discussing right
16 now incorporated the claim limitations of the '115
17 patent?
18 MS. ABDULLAH: Your Honor, we do not have
19 any direct evidence from Mr. Cheyer. And the reason
20 is because he was never deposed in this
21 proceeding and he is also not a consultant or
22 anybody that's working with IPA at the moment. I
23 know --
24 JUDGE TROCK: Wasn't he deposed -- sorry.
25 Wasn't he deposed in the Google proceeding?
26 MS. ABDULLAH: He was, your Honor. And that
1 was pursuant to a subpoena that we had to get
2 permission to serve from the Board because he
3 refused to simply cooperate with us voluntarily.
4 JUDGE TROCK: Was there a reason why you
5 didn't approach the Board in this case for a
6 subpoena?
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7 MS. ABDULLAH: Your Honor, because we don't
8 believe that his testimony is as probative as the
9 expert testimony that we presented drawing the
10 direct connection as well as the actual industry
11 praise and long-felt need evidence that we --
12 JUDGE TROCK: But wouldn't he be a witness
13 with personal knowledge of whether or not that
14 original Siri version incorporated the claim
15 limitations of the '115 patent?
16 MS. ABDULLAH: Your Honor, respectfully, I
17 believe that that was not -- that would not be a
18 question of personal knowledge but rather of expert
19 testimony. And also, your Honor, I would note that
20 I don't believe that we would have the requisite
21 showing under the Garmin factors that he would be
22 able to testify to those aspects.
23 JUDGE TROCK: But he is the inventor, right?
24 You've told us that.
25 MS. ABDULLAH: Yes, your Honor, he is the
26 inventor.
1 TROCK: All right. So he might be a
2 person -- a witness with personal knowledge; isn't
3 that right?
4 MS. ABDULLAH: Absolutely. And were this a
5 district court case, you know, I'm sure we would
6 have pursued his deposition. I'm sure Microsoft
7 would have as well. But given the high burden for
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8 us to obtain additional discovery, your Honor, we
9 determined that the probative value of his testimony
10 was not such that it would meet the Garmin factors
11 here.
12 JUDGE TROCK: But you did pursue that in the
13 Google case though?
14 MS. ABDULLAH: Your Honor, the Google case
15 was a different issue. The question there had to do
16 with authorship of a prior art reference that
17 Mr. Cheyer was an author of. And it had to do with
18 whether that could be considered the work of another
19 versus the inventor. So inventorship was front and
20 center in the Google proceedings where it is not
21 here. Here this is a 103 analysis for which, you
22 know, obviously I can't pretend to say what the
23 Board would have done. But I think the evidence
24 that we have, that we have been able to present
25 demonstrates that link better than Mr. Cheyer's
26 testimony would be able to.
Paper 42, 114:12–116:26.
Petitioner also points to evidence that potentially undermines a nexus
between the challenged claims of the ’115 patent and the Siri application.
For example, Petitioner argues that “Adam Cheyer testified that ‘Siri’ did
not implement the agent registry functionality described in the ’115 Patent.”
Reply 84 (citing Ex. 2034, 46:12-47:5). Likewise, Petitioner argues, “an
email authored by Adam Cheyer indicates that as of August 2005 OAAv2
had only been adapted to run on ‘Windows CE’ mobile devices—there is no
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mention of iOS, Apple, or any other mobile platforms.” Reply 84 (citing Ex.
1137).
Petitioner also argues that Patent Owner’s “evidence credits the
CALO project with being the progenitor of the ideas that led to Siri—not
any version of OAA.” Reply 84 (citing Ex. 2042, 1 (“Siri traces its origins
to a military-funded artificial-intelligence project called CALO”); Ex. 2044,
1; Ex. 2047, 2; Ex. 2054, 1; Ex. 2001, 2). “Nor is there any evidence in the
record,” Petitioner argues, “that OAA was ultimately utilized in SRI’s
CALO project other than that the original OAA (i.e., the version first created
in 1994 prior to the ’115 Patent work) laid ‘groundwork’ for what would
ultimately become CALO.” Reply 84 (citing Ex. 2054). Petitioner argues
that “substantial evidence shows that a later agent system named “SPARK”
(SRI Procedural Agent Realization Kit) was used as the basis of CALO,” but
that Patent Owner “ignores this intervening SPARK system and makes no
attempt to show it practices the claims, nor does it meaningfully address the
CALO project.” Reply 85 (citing Ex. 1136 §7).
Petitioner argues that Patent Owner “failed to provide evidence ‘that
the industry praised a claimed invention or a product that embodies the
patent claims.’” Reply 85 (quoting Apple Inc. v. Samsung Elecs. Co., 839
F.3d 1034, 1053 (Fed. Cir. 2016) (emphasis omitted). In particular,
Petitioner argues, Patent Owner “failed to ‘establish that the evidence relied
upon traces its basis to a novel element in the claim and not to something in
the prior art.’” Reply 85 (quoting BioMarin Pharm. Inc. v. Genzyme
Therapeutic Prods. LP, IPR2013-00537, Paper 79, 22 (PTAB Feb. 23, 2015)
(emphasis omitted).
“Furthermore,” Petitioner argues, Patent Owner “has provided no
showing that the Siri App ‘embodies the claimed features and is co-
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extensive with them,’ and accordingly can gain no presumption from any
Siri success.” Reply 85–86 (quoting Polaris Indus., Inc. v. Arctic Cat, Inc.,
882 F.3d 1056, 1072 (Fed. Cir. 2018) (emphasis omitted). “Even assuming
portions of Siri embodied the claims,” Petitioner argues, “the record is
undisputed that Siri provides significant functionality well beyond anything
covered by the claims—voice recognition, for example.” Reply 86.
Petitioner further argues “the table provided by [Patent Owner]
merely lists unrelated claim language and ‘examples’ of ‘personal context
awareness’ with no further analysis.” Id. at 87. “For example,” Petitioner
argues, Patent Owner “provides no explanation about how the alleged
‘Personal Context Awareness’ feature in Siri practices ‘a layer of
conversational protocol.’” Id. Moreover, Petitioner argues, “despite
claiming that ‘the Siri application’s integration of personal context
awareness is made possible because of the claimed inter-agent language
limitations,’ [Patent Owner] provides no evidence. [Patent Owner] cites
only to a single paragraph of Dr. Medvidovic’s declaration, which is itself
bare ipse dixit and further undermined by his failure to examine the source
code or any other descriptive technical materials for Siri.” Id. at 88 (citing
Ex. 2032 ¶ 222).
Petitioner argues that Patent Owner’s evidence that Siri embodies the
ICL limitations of claim 1 “is no better.” Reply 88 (citing Resp. 140).
Petitioner argues Patent Owner:
does not discuss the actual limitations of claim 1 nor explain how
giving different answers depending on individual preferences
embodies the claims. For example, [Patent Owner] does not even
attempt to articulate how Siri has a conversational layer, or event
types, or how those event types are refined by parameters. Nor
does [Patent Owner] address how Siri embodies the claimed
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agent registry limitation, particularly when the testimony of the
inventor Mr. Cheyer indicates that it does not.
Reply 88 (citing Ex. 2034, 46:12–47:5).
Petitioner argues that Dr. Medvidovic’s testimony should be given no
weight. Reply 89. Petitioner argues that:
Dr. Medvidovic admitted that he would be unable to determine
whether a piece of software was an “agent” without examining
the source code for that software, and further admitted that he
had not reviewed the Siri source code nor ever asked to review
such source code. Ex. 1129, 11:9–16. Yet, Dr. Medvidovic
opines at length that Siri must embody the claims of the ’115
Patent because, for example, “personal context awareness and
service delegations are made possible by the functionality
claimed in the independent claims of the ’115 Patent”—an
opinion without any evidentiary support. Ex. 2032 ¶ 220. Indeed,
by Dr. Medvidovic’s own admission, he lacks the necessary
personal knowledge to opine on the architecture of Siri.
Reply 89.
In its Sur-reply, Patent Owner argues that there is “no prohibition
against the use of circumstantial evidence in IPR proceedings.” Sur-reply
66. Patent Owner argues, “Dr. Medvidovic provided unrebutted testimony,
including a lengthy appendix, supported by this evidence, which must be
credited. Id. at 68 (citing Ex. 2032, §§ 205-229, App. A). Patent Owner
also points out that “Dr. Medvidovic testified that looking at the code is not
the exclusive means of identifying an agent – other available information
can be utilized.” Sur-reply 69; See Ex. 1129, 10:14–11:16. Moreover,
Patent Owner argues, “under the Garmin factors, Patent Owner was unable
to seek Apple’s highly confidential source code in connection with these
proceedings.” Sur-reply 70 (citing Garmin Int’l, Inc. v. Cuozzo
Speed Techs., LLC, IPR2012-00001, Paper 26 at 6–7 (PTAB Mar. 5, 2013).
With respect to Mr. Cheyer’s testimony, Patent Owner explains that “Patent
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Owner was only able to depose Mr. Cheyer after the Board granted Patent
Owner’s motion under 37 C.F.R. § 42.52(a) for leave to serve a subpoena to
compel Mr. Cheyer to testify” in a related proceeding. Sur-reply 71.
We agree with Petitioner that Patent Owner does not to provide
persuasive evidence that the Siri application is reasonably commensurate
with the scope of the challenged claims. Patent Owner’s cited evidence
attempting to tie the Siri application to the limitations of claim 1 relies
substantially on the testimony of Dr. Medvidovic (Ex. 2032) and a
web.archive .org Internet page (Ex. 2040) Patent Owner identifies as “Siri,
Inc., Technology – “About Siri – Your Virtual Personal Assistant.” See
Resp. 136–140 (citing Ex. 2032 ¶¶ 216–222, 224; Ex. 2040).
We note at the outset that Dr. Medvidovic’s opinion does not rely on
an examination of the Siri application’s source code. During his deposition,
Dr. Medvidovic testified as follows:
[Q] Let me ask you, have you ever reviewed the Siri source code?
[A] I have not.
[Q] So you don't know the details of how Siri is implemented?
[A] Not beyond what I'm stating in the declaration as my sources of
information that I'm drawing on.
Ex. 1129, 146:10–17. This is significant because Dr. Medvidovic testified at
his deposition that an “agent”—an element in every claim—is a “piece of
functionality that is capable of performing certain tasks that is embodied in
at least for a software engineer a clearly identifiable body of code,” and that
“if there is no accompanying specification language, then we would have to
look inside the code [to determine] what kinds of facilities the agent
provides.” See Ex. 1129, 9:13–11:8). As far as we can determine, neither
party has provided “accompanying specification language” for the Siri
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application source code. Instead, Dr. Medvidovic testified, the evidence he
relied upon to form his opinion is “circumstantial,” or a “suggestion.” See
Ex. 1129, 147:7–148:9.
In Section XI.B of his declaration, “Nexus of Industry Praise to the
Independent Claims of the ’115 Patent,” Dr. Medvidovic cites to Exhibit
2040 as support for his understanding of how the Siri application works. See
e.g., Ex. 2032 ¶¶ 215–216, 218, 226, 229.
Exhibit 2040 describes “Siri” as:
the first mainstream consumer application of a Virtual Personal
Assistant. Siri is an intelligent software agent designed to have
a back-and-forth conversational interaction with you as it helps
you get tasks done. The three main technical components behind
Siri’s differentiation correspond to the essential qualities of an
assistant: a conversational interface, personal context awareness
and service delegation.
Ex. 2040, 1.
In his declaration, Dr. Medvidovic discusses the “personal context
awareness” and “service delegation” aspects of Siri in some detail (see, e.g.,
Ex. 2032 ¶¶ 216–220, 222–229). Dr. Medvidovic, however, only mentions
Siri’s “conversational interface” in passing, even though Exhibit 2040
describes Siri as an intelligent software agent “designed to have a back-and-
forth conversational interaction with you as it helps you get tasks done,” and
lists Siri’s “conversational interface” as the first of Siri’s “three main
technical components.” See Ex. 2032 ¶ 215; Ex. 2040, 1.
In his declaration, Dr. Medvidovic attempts to link the Siri application
and the limitations of the independent claims of the ’115 patent. See Ex.
2032 ¶¶ 205–229, App. A, 1–32. Dr. Medvidovic does this by first
separating the limitations of independent claims 1 and 29 into two
categories, an “Inter-agent Communication Layer” (ICL) and “Service
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Request Planning and Execution.” See Ex. 2032, 70–71. Dr. Medvidovic
then states that “[i]t is my opinion that the Siri application’s integration of
personal context awareness is made possible because of the claimed ICL.”
Id. ¶ 222. Dr. Medvidovic explains that “within the conversational protocol
layer of the ICL, there are further claimed “parameter lists” that may
“further refine the one or more events.” Id. ¶ 223. Dr. Medvidovic
concludes that “[t]he claimed parameter lists are what allows the Siri
application to provide ‘different answers’ depending on the context, as they
are able to refine the meaning of a service request.” Id. ¶ 226. Dr.
Medvidovic, however, provides no citation or further support for this
conclusion nor does he point to any evidence to show that the Siri
application utilizes the claimed parameter lists. See id.
In his declaration, Dr. Medvidovic also states that “[i]t is further my
opinion that the Siri application’s integration of service delegation is made
possible because of the claimed service request planning and execution
claim limitations.” Id. ¶ 227. Dr. Medvidovic attempts to support this
opinion by comparing the language of claim 1 relating to a goal satisfaction
plan that includes “a suitable delegation of sub-goal requests to best
complete the requested service request by using reasoning” to language used
in Exhibit 2040 to describe the service delegation feature of the Siri
application, “Service Delegation. An assistant can reason about what
specific sets of resources of services would best be combined to help you
accomplish a particular task.” See id. ¶ 229; Ex. 2040, 2.
In our view, such a comparison is speculative at best to demonstrate
that the Siri application utilizes claim 1’s “service request planning and
execution limitations,” as Dr. Medvidovic opines. The limitations of claim 1
that Dr. Medvidovic puts in this category include:
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A computer-implemented method for communication and
cooperative task completion among a plurality of distributed
electronic agents, comprising the acts of:
registering a description of each active client agent’s functional
capabilities as corresponding registered functional capabilities,
receiving a request for service as a base goal in the inter-agent
language, in the form of an arbitrary complex goal expression;
dynamically interpreting the arbitrarily complex goal expression,
said act of interpreting further comprising:
generating one or more sub-goals expressed in the inter-agent
language;
constructing a goal satisfaction plan wherein the goal satisfaction
plan includes:
a suitable delegation of sub-goal requests to best complete the
requested service request-by using reasoning that includes one or
more of domain-independent coordination strategies, domain-
specific reasoning, and application-specific reasoning
comprising rules and learning algorithms; and
dispatching each of the sub-goals to a selected client agent for
performance, based on a match between the sub-goal being
dispatched and the registered functional capabilities of the
selected client agent.
Ex. 2032, 70. Yet, Dr. Medvidovic does not persuasively show that the Siri
application “register[s] a description of each active client agent’s functional
capabilities,” “receiv[es] a request for service . . . in the form of an arbitrary
complex goal expression,” “generat[es] one or more sub-goals expressed in
the inter-agent language,” “construct[s] a goal satisfaction plan,” or
“dispatch[es] each of the sub-goals to a selected client agent . . . based on a
match between the sub-goal . . . and the registered functional capabilities of
the selected client agent.” See id. ¶¶ 227–229.
In fact, as Petitioner points out, there is evidence of record that the
Siri application did not utilize the claimed agent registry functionality as Dr.
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Medvidovic opines. According to Petitioner, Mr. Cheyer, the named co-
inventor on the ’115 patent and the co-founder of Siri, Inc., “testified that
‘Siri’ did not implement the agent registry functionality described in the
’115 Patent.” Reply 84 (citing Ex. 2034, 46:12-47:5). At a deposition in a
related proceeding, Mr. Cheyer testified as follows:
24 BY MR. HENDERSHOT:
25 Q. So you say "it's likely." Are there
1 features in OAA that you think have yet to be
2 implemented in systems today?
3 MR. HARTSELL: Objection; form.
4 BY MR. HENDERSHOT:
5 Q. Commercial voice-assistance systems.
6 MR. HARTSELL: Objection; form --
7 THE WITNESS: Yes.
8 MR. HARTSELL: -- relevance, outside the
9 scope of direct.
10 THE WITNESS: Yes.
11 BY MR. HENDERSHOT:
12 Q. Could you describe those?
13 MR. HARTSELL: Same objections.
14 THE WITNESS: Every system is different,
15 but one feature of the original OAA 1 demo was that
16 independent agents -- today we would call them more
17 like web services -- could connect dynamically to
18 the -- to the platform, register new capabilities
19 with that platform, and without knowing about other
20 services on the network, explicitly, the user could
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21 make a single request that would be -- that would
22 involve a collaboration, and sometimes competition,
23 among those network ecosystem of services.
24 And so one user request would be delegated
25 to many services which were independently developed,
1 and none of those services knew precisely about each
2 other. And that when I look at Siri and Google
3 Assistant and Alexa and Bixby, that is not a
4 capability that I have seen in any of the services
5 today.
Ex. 2034, 45:24–46:2, 46:12–47:5
Petitioner also points out, and we agree, that there is evidence of
record that credits the CALO project with being the progenitor of the ideas
that led to Siri. See, e.g., Ex. 2042, 1 (“Siri traces its origins to a military-
funded artificial-intelligence project called CALO”); see also Ex. 2044, 1;
Ex. 2047, 2; Ex. 2054, 1; Ex. 2001, 2). Opus Research explains that “Siri is
set apart because it applies the depth of knowledge its founders and software
specialists have built at SRI and elsewhere in creating a “cognitive assistant
that learns and organizes” (CALO). Ex. 2044, 1. Petitioner points out that
there is also evidence of record that indicates a later agent system named
“SPARK” (SRI Procedural Agent Realization Kit) was used as the basis of
CALO. See Ex. 1136 § 7. The SPARK-based Personal Assistant is
described as follows:
SPARK provides general-purpose agent technology for a range
of domains that require reactive task execution. To date, the
driving application for SPARK has been the development of an
intelligent personal assistant for a high-level knowledge worker.
This assistant, called CALO, will be able to perform routine tasks
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on behalf of its user (e.g., arrange meetings, complete online
forms, file email), as well as undertake open-ended processes
(e.g., purchasing a computer online), and anticipate future needs
of its user.
Ex. 1136 § 7. This evidence, however, does not appear to have been
considered or addressed by Dr. Medvidovic. See Ex. 2032 ¶¶ 205–229.
We are mindful that objective evidence of nonobviousness need only
be “reasonably commensurate with the scope of the claims.” Rambus Inc. v.
Rea, 731 F.3d 1248, 1257 (Fed. Cir. 2013). We also bear in mind that
“[w]hen the thing that is commercially successful is not coextensive with the
patented invention—for example, if the patented invention is only a
component of a commercially successful machine or process—the patentee
must show prima facie a legally sufficient relationship between that which is
patented and that which is sold.” Demaco Corp. v. F. Von Langsdorff
Licensing Ltd., 851 F.2d 1387, 1392 (Fed. Cir. 1988).
Here, Patent Owner relies on industry praise for the Siri application
and evidence of an unmet need to establish a nexus between the Siri
application and the claimed invention. However, we are concerned that
Patent Owner and its declarant, Dr. Medvidovic, pay little attention to one of
the “three main technical components behind Siri’s differentiation,” the
“conversational interface,” when evaluating the basis for the proffered
“industry praise.” See Ex. 2040, 1.
Petitioner argues, and we agree, that “[e]ven assuming portions of Siri
embodied the claims, the record is undisputed that Siri provides significant
functionality well beyond anything covered by the claims—voice
recognition, for example.” Reply 86. The impact of Siri’s “conversational
interface” on Siri’s reviewers is notable. For example, MIT Technology
Review explains that with Siri, “[u]sers can type or speak commands in
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casual sentences, and the software deciphers their intent from the context.”
Ex. 2042, 1. Opus Research reports that “I’ve had [Siri] for a couple of days
and here are my initial reactions. My overall experience has been quite
positive. The quality of voice recognition (powered by the same “engine”
that supports Dragon Dictation and Dragon Search on the iPhone) is quite
good.” Ex. 2044, 1. Fast Company.Com reports, “Siri, which launches
today as a free iPhone app, is a virtual personal assistant that amazingly
resembles . . . an actual personal assistant. It understands plain English
commands, which can be spoken or typed (e.g. “Get me tickets to that Matt
Damon movie”). Ex. 2045, 2.
Further, The Chronicle of Higher Education explains that Siri “takes a
multi-step search process and turns it into one, simple, voice-driven
request.” Ex. 2046, 2. USA Today reported that “[t]here were occasional
mistakes in speech recognition, but the overall accuracy [of Siri] was
impressive, at least when I spoke slowly and clearly in a quiet environment.”
Ex. 2047, 2. Spatial Computing Strategy & Research reports that, with Siri,
“You ask it to do stuff like ‘find me a pizza place near me’ or ‘tell me the
weather in Chicago this weekend,’ [w]ith your voice or by typing
commands.” Ex. 2048, 2. Search Engine Land explains that Siri is
“intended to enable you to do more with your voice and your phone in fewer
clicks or moves.” “[O]ne can speak to Siri in a more natural way. Rather
than speaking like a robot and saying ‘Open Table’ to minimize error, you
can say something more elaborate and ‘conversational’ such as, ‘I’d like a
reservation tonight around 7:30 at Le Cheval.’” Ex. 2050.
Each of these reported examples indicate that the reviews Patent
Owner relies upon to demonstrate “industry praise” for the Siri application
considered Siri’s conversational interface to be a significant part of its
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functionality. Unfortunately, Patent Owner and Dr. Medvidovic give Siri’s
“conversational interface” little, if any, consideration when evaluating the
reasons for the “industry praise” used to try and establish a nexus between
the Siri application and the claimed invention. See, e.g., Ex. 2032 ¶ 215.
Even if the Siri application incorporated some of the functionality of the
claimed invention, the evidence of record relied on by Patent Owner shows
that the Siri application, and its attendant “industry praise,” is not reasonably
commensurate with the scope of the claimed invention. Patent Owner does
not argue that the Siri application’s “conversational interface” is claimed by
the ’115 patent.
For these reasons, we are not persuaded that Patent Owner’s evidence
of industry praise for the Siri application, and evidence of an unresolved
need, establishes a sufficient nexus between the Siri application and the
challenged claims of the ’115 patent. If anything, the evidence of record
establishes only a weak or vague connection between the Siri application
and the claimed invention.
7. Independent Claim 1
Claim 1 is directed to a method for communication and cooperative
task completion among distributed electronic agents comprising the steps of
registering a description of each active client agent’s functional capabilities
using an inter-agent language, receiving a request for service as a base goal
in the form of an arbitrarily complex goal expression in the inter-agent
language, and dynamically interpreting the arbitrarily complex goal
expression. Ex. 1001, 29:10–43. Claim 1 also recites that the “inter-agent
language” includes a “layer of conversational protocol” and a “content
layer.” Id. at 29:16–24. In addition, claim 1 recites that the step of
“dynamically interpreting the arbitrarily complex goal expression”
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comprises “generating sub-goals” and “constructing a goal satisfaction
plan.” Id. at 29:28–32. The recited “goal satisfaction plan” in turn includes
“a suitable delegation of sub-goal requests” and “dispatching each of the
sub-goals to a selected client agent for performance.” Id. at 29:32–41.
In its proposed combination of Kiss with FIPA97, Petitioner relies on
Kiss to teach electronic agents and their general communication and
collaboration functions, including the steps recited in claim 1, whereas
FIPA97 is relied upon to teach the recited “inter-agent language” and the
limitations relating to the inter-agent language, such as “layer of
conversational protocol,” a “content layer,” an “arbitrarily complex goal
expression,” and “sub-goals expressed in the inter-agent language.” Pet. 28,
32–54.
a. Preamble
Claim 1 recites a preamble as follows: “A computer-implemented
method for communication and cooperative task completion among a
plurality of distributed electronic agents.”15 Petitioner asserts that Kiss
teaches the recited “distributed electronic agents” because Kiss describes
that “[i]nteraction between a user and the knowledge resources is mediated
by a collection of cooperative intelligent agents” (Pet. 32 (citing Ex. 1005,
2:43–49, Fig. 1)), where the agents are “distributed” in a “hierarchical
architecture.” Id. (citing Ex. 1005, Abstract, 2:50–55, 4:57–59).
Petitioner contends that Kiss also teaches the recited “communication
and cooperative task completion” among the electronic agents because Kiss

15 Because Petitioner shows that the recitations in the preamble are satisfied
by Kiss, we need not determine whether the preamble is limiting. See Vivid
Techs., 200 F.3d at 803.
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describes that “cooperative intelligent agents [that] incorporate generalized
automated negotiation and distributed inference (i.e. problem-solving)
processes,” analyze “problem statements,” and reorganize them as “sets of
tasks.” Pet. 33 (citing Ex. 1005, 2:50–55).
Patent Owner does not specifically dispute that Kiss teaches the
preamble of claim 1. See generally Resp. Based on the complete record and
for the reasons explained by Petitioner, we are persuaded that Petitioner has
demonstrated sufficiently that Kiss teaches the preamble of claim 1.16
b. Registering a Description
The first step recited in claim 1 is “registering a description of each
active client agent’s functional capabilities as corresponding registered
functional capabilities.” Ex. 1001, 29:13–15. Petitioner asserts that Kiss
teaches this limitation because Kiss describes a “registry of agents,” which is
constructed through “registering a description of each active client agent’s
functional capabilities as corresponding registered functional capabilities.”
Pet. 34 (citing Ex. 1005, 3:37–45, 6:66–7:19, 8:41–48, 10:32–35, 12:18–20,
Fig. 1).
Patent Owner does not specifically dispute that Kiss teaches this
“registering a description” limitation. See generally Resp. Based on the
complete record and for the reasons explained by Petitioner, we are
persuaded that Petitioner has demonstrated sufficiently that Kiss teaches

16 We also find that Patent Owner has waived any argument directed to the
preamble of claim 1. See Paper 16 (Scheduling Order), 7 (“Patent Owner is
cautioned that any arguments for patentability not raised in the response may
be deemed waived.”).
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“registering a description of each active client agent’s functional capabilities
as corresponding registered functional capabilities,” as recited in claim 1.17
c. An Inter-agent Language Including a Layer of
Conversational Protocol and a Content Layer
Claim 1 recites that “registering a description of each active client
agent’s functional capabilities” is performed using an “expandable,
platform-independent, inter-agent language” (Ex. 1001, 29:13–16) and that
the “inter-agent language” includes:
a layer of conversational protocol defined by event types and
parameter lists associated with one or more of the events,
wherein the parameter lists further refine the one or more
events;
a content layer comprising one or more of goals, triggers and data
elements associated with the events.
Id. at 29:16–24. Petitioner asserts that FIPA97’s ACL teaches each of these
limitations relating to an “inter-agent language.” Pet. 34–43.
Patent Owner asserts that FIPA97 does not teach “refin[ing] . . .
events” and “triggers” recited in the claim. Resp. 97–108. In addition,
Patent Owner argues that FIPA ACL is not “expandable” because, among
other reasons, FIPA ACL does not have the capability of refining events. Id.
at 105–106. Patent Owner does not dispute FIPA97 teaches the rest of the
limitations relating to an “inter-agent language” recited in clam 1, as set
forth above. See id. at 95–108.

17 We also find that Patent Owner has waived any argument directed to this
claim limitation. See Paper 16, 7.
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i. Inter-agent Language
Petitioner relies on Agent Communication Language of FIPA97
(FIPA ACL) as teaching the “inter-agent language” recited in claim 1.
Pet. 28 (citing Exs. 1006, 1007, 1008), 35. In particular, Petitioner contends
that FIPA97 discloses Agent Communication Language (ACL) “with
precisely defined syntax, semantics and pragmatics” for “communication
between independently designed and developed software agents.” Id. at 35
(citing Ex. 1007, 3).
ii. Platform-independent, Expandable Inter-agent
Language
Petitioner asserts that FIPA ACL is “platform-independent,” as recited
in claim 1, because it is designed to “maximise interoperability across agent-
based applications, services and equipment,” and to facilitate the
“construction and management of an agent system composed of different
agents,” even when those systems are “built by different developers.”
Pet. 35 (citing Ex. 1007, vii, ix). Patent Owner does not dispute that FIPA
ACL is “platform-independent,” as recited in the claim. See Resp. 95–108.
Petitioner also contends that FIPA ACL is “expandable,” as recited in
claim 1, because in FIPA97 “[a]gents may use communicative acts with
other names, not defined” in the specification (Pet. 35 (citing Ex. 1007, 12))
and agents “may choose to implement any subset (including all, though this
is unlikely) of the pre-defined message types and protocols” (id. (citing
Ex. 1007, 12)). In addition, Petitioner asserts that in FIPA97 the “formal
basis” of the language is “supplemented with pragmatic extensions” that
help “ease the practical implementation of effective inter-agent
communications.” Id. (citing Ex. 1007, 11). Petitioner argues that FIPA97
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also discloses possible extensions to the inter-agent communication
language, such as MIME header support. Id. (citing Ex. 1007, 82).
Patent Owner asserts that FIPA ACL is not “expandable” basically for
two reasons. Resp. 105–106. First, citing the prosecution history, Patent
Owner argues that “the concept of expandability” relates to the feature of
“refin[ing] . . . events” recited in the claim and that FIPA ACL is not
“expandable” because FIPA ACL does not have the capability of refining
events. Id. Second, Patent Owner contends that FIPA ACL is not
“expandable” in a general sense, citing various criticism of FIPA ACL from
“[r]esearchers in the field” regarding FIPA ACL’s alleged rigidity and
inflexibility in certain aspects. Id. at 106. We address each of these
arguments in turn.
Addressing first Patent Owner’s argument about “the concept of
expandability” as it relates to the feature of “refin[ing] . . . events” recited in
the claim, Patent Owner cites the following statement by the Examiner in the
Notice of Allowability:
The disclosed agent communication language [KQML] does not
read upon the cited agent language because the layer does not
define an event type as well as the parameter lists that further
refines the event. Nwana’s language at best has separate layers
for the event and the parameters associated with the event. By
Applicant providing these parameters in the same layer as the
event such that they further refine the event, a standard set of
events are dynamically extensible based upon the parameter list
which is not possible with the teachings of Nwana. Therefore,
the claims are allowable over the prior art of record.
Ex. 1002, 14 (emphases added); Resp. 105 (citing Ex. 1002, 14). As
indicated in the Amendment submitted before the allowance of the claims,
claim 1 was amended to recite “wherein the parameter lists further refine the
one or more events” to distinguish the claim from the combination of
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Nwana/KQML and Kiss cited by the Examiner. See Ex. 1002, 13–14, 18,
28, 51. Patent Owner argues, therefore, that the limitation “expandable”
recited in claim 1 relates to the feature of the parameter lists that “refine . . .
events,” as recited in the claim. Resp. 105. Patent Owner asserts that FIPA
ACL is not “expandable,” as recited, because FIPA ACL does not teach
parameters that further refine events. Id.
In response, Petitioner asserts that the claim language “using an
expandable, platform-independent, inter-agent language” was part of the
originally filed claims, which were rejected by the Examiner over the
combination of Nwana/KQML and Kiss. Reply 59–60 (citing Ex. 1002,
763). Petitioner argues that, therefore, the Examiner’s discussion of
“dynamically extensible” events resulting from the “refin[ing] . . . events”
feature added in the Amendment is unrelated to the “expandable” language
that was present in the claim as originally filed. Id. at 60. Petitioner also
asserts that, even if the “expandable” language relates to the “refin[ing] . . .
events” feature, FIPA ACL is “expandable” because FIPA ACL teaches
parameter lists that refine events. Id.
We need not determine whether the “expandable” language relates to
the “refin[ing] . . . events” feature added in the Amendment because, as
discussed below, we agree with Petitioner that FIPA ACL teaches
“parameter lists” that “further refine the one or more events,” as recited in
claim 1. Thus, to the extent Patent Owner asserts that the limitation
“expandable” recited in claim 1 relates to the feature of the parameter lists
“refin[ing] . . . events,” Petitioner demonstrates sufficiently that FIPA ACL
teaches an “expandable . . . inter-agent language.”
Turning to the Specification, the ’115 patent describes that “[a]s new
agents connect to the facilitator, registering capability specifications and
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natural language vocabulary, what the user can say and do dynamically
changes; in other words, the ICL is dynamically expandable.” Ex. 1001,
8:41–44 (emphases added). That is, the ’115 patent suggests that the
expandability of the ICL (or “inter-agent language,” as recited in claim 1)
results from or flows from the ICL’s feature of “registering capability
specifications and natural language vocabulary.”18 Id. As noted in the
Institution Decision, this portion of the Specification appears to describe an
exemplary embodiment. Inst. Dec. 54 (citing Ex. 1001, 8:40–49).
As discussed above, Petitioner demonstrates sufficiently Kiss teaches
“registering a description of each active client agent’s functional capabilities
as corresponding registered functional capabilities,” as recited in claim 1.
Thus, to the extent the portion of the Specification discussed above describes
an embodiment of an “expandable . . . inter-agent language,” we are
persuaded that the combination of Kiss and FIPA97 teaches “registering a
description of each active client agent’s functional capabilities as
corresponding registered functional capabilities, using an expandable,
platform-independent, inter-agent language,” as recited in claim 1 (see Pet.
33–35).
Next, Patent Owner asserts that FIPA ACL is not “expandable” in a
more general sense, citing various “criticisms” from “[r]esearchers in the
field” about FIPA ACL’s alleged “rigidity and lack of expandability.” Resp.
106 (citing Ex. 2031, 2 (“[i]t is unlikely that a single set of axioms will cover
all eventualities because communication is inherently context dependent”);

18 As described in the Specification, agents connecting to the facilitator is
part of the operation of the system of the ’115 patent, not a feature of the
ICL. See Ex. 1001, 6:24–44; 7:13–32.
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Ex. 1081, 2 (“[T]he current FIPA-ACL spec tends to unnecessarily over-
constrain the feasibility of communication acts . . . .”). Patent Owner also
contends that Petitioner’s declarants, Dr. Finin and Dr. Lieberman, made
allegedly similar statements. Id. (citing Ex. 1082, 2 (“The FIPA proposal
only covers the most rudimentary message types.”); Ex. 2014, 207:5–20
(“FIPA is a standard, like a miles-per-gallon standard . . . So that doesn’t say
how you’re going to build a car; it just says a car has to get . . . 50 miles a
gallon.”)).
We are not persuaded by Patent Owner’s argument and evidence
because Patent Owner does not explain adequately why the cited extrinsic
evidence regarding FIPA ACL’s alleged “rigidity” or inflexibility in certain
aspects shows that FIPA ACL is not “expandable” as recited in the claim. In
the Institution Decision, based on the preliminary record, we did not find
anything in the intrinsic record that justifies deviating from the plain
meaning of the claim term “expandable.” Inst. Dec. 54–55. Upon
considering the complete record, we discern no reason to depart from our
preliminary assessment.19
We may “at any time in order to better understand the underlying
technology and may also rely on dictionary definitions when construing
claim terms, so long as the dictionary definition does not contradict any

19 In the Patent Owner Response, Patent Owner does not discuss the
Specification or argue that the meaning of “expandable” recited in the claim
can be discerned from the Specification, although we invited the parties in
the Institution Decision to address the term “expandable” further in their
papers during trial. See Resp. 105–107 (citing Inst. Dec. 55–56). Thus,
Patent Owner has waived its argument regarding the meaning of
“expandable” based on any disclosures in the Specification. See Paper 16, 7.
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definition found in or ascertained by a reading of the patent documents.”
Phillips, 415 F.3d at 1322–23 (citation omitted). Accordingly, in the
Institution Decision, finding no readily discernable meaning of “expandable”
in the intrinsic record, we consulted a technical dictionary, the 7th edition of
the IEEE Dictionary (Ex. 3001).20 The IEEE Dictionary defines
“expandability” as follows: “expandability (1) (supervisory control, data
acquisition, and automatic control) The capability of a system to be
increased in capacity or provided with additional functions. (2) See also:
extendability.” Ex. 3001, 3.21 The same dictionary defines “extensible
language” as follows.
A computer language that can be altered or can alter itself to
provide a programmer with additional user-specified functions
or capabilities. Examples include Ada, ALGOL, FORTH, and
LOGO, because each can be used in a building block fashion to
construct increasingly complex functions.
Id. at 4. Upon considering the complete record, we determine that these
dictionary definitions are consistent with the intrinsic record, including the
description of an embodiment in the Specification regarding “the ICL
[being] dynamically expandable.” See Ex. 1001, 8:41–44.
In the Institution Decision, based on the preliminary record, we found
that the characteristics of FIPA ACL argued by Petitioner—such as the
ability to use communicative acts with other names not defined in the
language specification, the pragmatic extensions, and the MIME

20 IEEE 100 THE AUTHORITATIVE DICTIONARY OF IEEE STANDARDS TERMS
(7th ed. 2000) (Ex. 3001).
21 The page numbers for Exhibit 3001 refer to the page numbers inserted in
the bottom, right-hand corner of each page.
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extension—appear to fall within the plain meaning of the term
“expandable,” as defined in the IEEE Dictionary. Inst. Dec. 55; see Pet. 35
(citing Ex. 1007, 11, 12, 82). Patent Owner does not argue otherwise. See
Resp. 105–107. Based on the complete record and for the reasons discussed
above, we determine that Petitioner has shown sufficiently that the
combination of Kiss and FIPA97 teaches “registering a description of each
active client agent’s functional capabilities as corresponding registered
functional capabilities, using an expandable, platform-independent, inter-
agent language,” as recited in claim 1.
iii. A Layer of Conversational Protocol Defined by Event
Types and Parameter Lists Associated With the
Events
Claim 1 recites that the “inter-agent language” includes “a layer of
conversational protocol defined by event types and parameter lists associated
with one or more of the events, wherein the parameter lists further refine the
one or more events.” Ex. 1001, 29:16–21. Petitioner contends that FIPA97
teaches each of these limitations. Pet. 36–41. Patent Owner asserts that
FIPA97 does not teach “the parameter lists further refine the one or more
events,” as recited in claim 1. Resp. 97–107.
(1) A Layer of Conversational Protocol
Petitioner asserts that FIPA97 teaches “a layer of conversational
protocol” recited in claim 1 because FIPA ACL “defines the semantics of
messages between agents as including a communicative act, followed by
various parameters and parameter expressions,” as shown in Figure 1 of
Part 2 of FIPA97 reproduced above in the Overview of FIPA97 section
(§ III.C.2.). Pet. 36 (emphasis added) (citing Ex. 1007, 2; Ex. 1003 ¶ 235).
Petitioner also argues that FIPA97 “discloses a number of different
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performatives and rules governing FIPA ACL messages and the meaning of
the different parts” and, therefore, discloses “a layer of conversational
protocol.” Id. at 36–37 (citing Ex. 1007, 11–22; Ex. 1003 ¶¶ 236–239).
(2) Events and Event Types
As discussed above in Section III.B. (Claim Construction), we
construe “event” to mean “a message or goal communicated between
agents” and “event type” to mean “a type of an event” for this Final Written
Decision.
Petitioner maps the “event” of claim 1 to FIPA ACL’s “message” and
asserts that FIPA ACL’s “message type” teaches an “event type” recited in
claim 1. Pet. 37–38 (citing Ex. 1007, 3, 4, 11–13, 18; Ex. 1003 ¶¶ 243, 246,
247). Petitioner argues that FIPA ACL’s “message” is an “event” recited in
claim 1 because the FIPA ACL communicative acts “are performed by an
agent sending a message to another agent.” Id. at 37 (emphasis added)
(citing Ex. 1007, 3, 4, 11; Ex. 1003 ¶ 243).
Referencing Figure 1 of Part 2 of FIPA97 reproduced above,
Petitioner asserts that in FIPA ACL, “[t]he first element of the message is a
word which identifies the communicative act being communicated, which
defines the principal meaning of the message,” and “the message’s
communicative act type corresponds to that which in KQML is called the
performative.” Pet. 37 (emphasis added) (citing Ex. 1007, 12, 13; Ex. 1007
¶ 244). Petitioner argues that FIPA97 further defines “message type” as
corresponding to the “communicative acts/performatives of the FIPA ACL.”
Id. at 38 (citing Ex. 1007, 18; Ex. 1003 ¶ 246).
As discussed above, Petitioner asserts that FIPA97 teaches “a layer of
conversational protocol” because FIPA ACL “defines the semantics of
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messages between agents as including a communicative act.” Pet. 36
(emphasis added) (citing Ex. 1007, 12). Petitioner contends that FIPA97
teaches the layer of conversational protocol in FIPA ACL is “defined by
event types,” as recited in claim 1, because in FIPA97, “[t]he message types
are a reference to the semantic acts defined in this specification.” Id. at
37–38 (underlined emphases added) (citing Ex. 1007, 11).
(3) Parameter Lists
Claim 1 recites that “a layer of conversational protocol” is also
“defined by . . . parameter lists associated with one or more of the events.”
Petitioner asserts that in FIPA97, FIPA ACL messages may include multiple
different parameters (“parameter lists associated with one or more of the
events”) that can “help the message transport service to deliver the message
correctly” or “the receiver to interpret the meaning of the message,” or “to
respond co-operatively,” as shown in Figure 1 of Part 2 of FIPA97
(reproduced above). Pet. 38–39 (citing Ex. 1007, 12, 14, Fig. 1). Petitioner
contends that FIPA97 discloses additional parameters in Table 1. Id. at 39
(citing Ex. 1007, 13–14).
(4) Refining Events
Claim 1 recites that “the parameter lists further refine the one or more
events.” Petitioner asserts that this phrase should be construed to mean that
“a list of parameters associated with an event can refine the event by
affecting the meaning of the event.” Pet. 13. Petitioner discusses the
disclosures in the Specification and the prosecution history of the ’115
patent in support of its proposed construction. Id. at 13–16 (citing Ex. 1001,
11:2–37; Ex. 1002, 13–14, 51, 55; Ex. 1020, 5, 6; Ex. 1003 ¶¶ 90, 91, 93–
98).
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Although Patent Owner discusses constructions for six terms in the
Patent Owner Response, Patent Owner does not discuss Petitioner’s
proposed construction for the claim term “refine . . . events” or proposes its
own construction. See Resp. 24–38. Instead, Patent Owner argues that
FIPA97 does not teach parameters that “refine . . . events” under Petitioner’s
proposed construction. See Resp. 97–98 (“the cited parameters in FIPA97
do not, contrary to Petitioner’s assertion, affect the meaning of the
message”), 100 (“this parameter does not affect the meaning of the
message”), 102 (“In contrast, the FIPA97 “receiver” parameter does not
affect the meaning of the “inform” communicative act.”). Based on the
arguments and evidence presented by Patent Owner, we understand Patent
Owner not to dispute Petitioner’s proposed construction for the term “the
parameter lists further refine the one or more events.”22
Upon considering the complete record, we agree with Petitioner that
the claim term “refine . . . events” encompasses “affecting the meaning of
the events.” As discussed above, during prosecution, the limitation “wherein
the parameter lists further refine the one or more events” was added to claim
1 in an amendment to distinguish the claim from the combination of
Nwana/KQML and Kiss cited by the Examiner. See Ex. 1002, 13–14, 18,
28, 51; Pet. 14–16 (citing Ex. 1002, 13–14, 51); Resp. 105 (citing Ex. 1002,
14). Citing the disclosures of Nwana/KQML discussed by the Examiner,
Petitioner persuasively argues that the parameters of Nwana’s KQML
message (i.e., the claimed “event”) “tell” do not change the meaning of the
message, whereas the parameters of an event of the ’115 patent’s change the

22 We also find that Patent Owner has waived any argument regarding claim
construction of this term. See Paper 16, 7.
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meaning of the event by “refin[ing] the event.” Pet. 14–16 (citing Ex. 1002,
13–14, 51, 55; Ex. 1020, 5, 6). In support of its argument, Petitioner cites
the following passage from the Specification that distinguishes the ’115
patent’s ICL (i.e., the recited “inter-agent language”) from KQML.
For example, in KQML, a request to satisfy a query can employ
either of the performatives ask_all or ask_one. In ICL, on the
other hand, this type of request preferably is expressed by the
event type evost solve, together with the solution_limit(N)
parameter--where N can be any positive integer. (A request
for all solutions is indicated by the omission of the solution limit
parameter.) [The request can also be accompanied by other
parameters, which combine to further refine its semantics.] In
KQML, then, this example forces one to choose between two
possible conversational options, neither of which may be
precisely what is desired. In either case, the performative chosen
is a single value that must capture the entire conversational
characterization of the communication.
Pet. 13 (alteration and underlined emphasis added) (quoting Ex. 1001,
11:21–37). Petitioner argues that a message having the KQML performative
“ask_all” always has the same meaning, requesting all solutions to the
request, just as the KQML performative “ask_one” always requests one
solution. Id. at 14. According to Petitioner, in contrast, the meaning of the
’115 patent’s event “evost_solve” depends on the value of its parameter
“solution_limit(N)”—e.g., an agent may request the identity of three agents
capable of translating a document by including “solution_limit(N)” in the
message and setting the value of N to 3. Id. Thus, Petitioner argues that the
parameters of an event of the ’115 patent affect the meaning of the event.
Id. at 13–16.
We are persuaded by Petitioner’s argument and evidence that the
“parameterized approach” of the ’115 patent (Ex. 1001, 11:16–21) can refine
an event by changing the meaning of the event. As discussed above in
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Section III.B., we construe “event” to mean “a message or goal
communicated between agents” and “goal” to mean “a request for service.”
The ’115 patent describes that “[i]n one embodiment, a request for one of an
agent’s services normally arrives in the form of an event from the agent’s
facilitator.” Id. at 12:44–46 (emphasis added). In a section titled “Refining
Service Requests,” the ’115 patent describes as follows:
In a preferred embodiment of the present invention, parameters
associated with a goal (or sub-goal) can draw on useful features
to refine the request’s meaning. For example, it is frequently
preferred to be able to specify whether or not solutions are to be
returned synchronously; this is done using the reply parameter,
which can take any of the values synchronous, asynchronous, or
none. As another example, when the goal is a non-compound
query of a data solvable, the cache parameter may preferably be
used to request local caching of the facts associated with that
solvable.
Id. at 15:49–58 (emphases added). Thus, the ’115 patent describes that in an
embodiment, parameters of a request for service, i.e., an event, can refine the
“meaning” of the request or event.
Nonetheless, we note that this passage and all of the disclosures of the
’115 patent cited by Petitioner describe exemplary embodiments. See id. at
11:25–28 (“In ICL . . . this type of request preferably is expressed by the
event type evost solve, together with the solution_limit(N) parameter--where
N can be any positive integer.” (emphasis added)), 15:49–51 (“In a preferred
embodiment of the present invention, parameters associated with a goal (or
sub-goal) can draw on useful features to refine the request’s meaning.”
(emphases added)). Thus, the term “refine . . . events” recited in claim 1
may encompass but is not necessarily limited to “affecting the meaning of
events.” See SuperGuide, 358 F.3d at 875 (“a particular embodiment
appearing in the written description may not be read into a claim when the
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claim language is broader than the embodiment”); WesternGeco, 889 F.3d at
1323–24 (“It is well established that claims are not limited to preferred
embodiments, unless the specification clearly indicates otherwise.”). Indeed,
Petitioner’s proposed construction of the term “the parameter lists further
refine the one or more events” expresses the meaning of the term in a
permissive fashion—“an event can refine the event by affecting the meaning
of the event.” Pet. 13 (emphasis added).
Based on the complete record, we determine that the term “the
parameter lists further refine the one or more events” encompasses
parameters “affecting the meaning of the events.”
Petitioner asserts that FIPA97 teaches the limitation “the parameter
lists further refine the one or more events” because several of the
conversational layer parameters disclosed in FIPA97 affect the meaning of
the performative included within the message, and therefore affect the
meaning of the message, or event. Pet. 40. According to Petitioner, FIPA97
discloses a parameter “:receiver,” which “can alter the meaning [of] an
event, such as ‘inform,’ to be ‘inform one’” or “inform a number’ of agents,
depending on the value of the parameter.” Id. (citing Ex. 1007, 13). Citing
the testimony of Dr. Lieberman, Petitioner asserts that naming a tuple
“corresponds to the action of multicasting the message” such that “semantics
of this multicast” is refined so that “the message is sent to each agent named
in the tuple.” Id. (citing Ex. 1007, 13; Ex. 1003 ¶ 258). Petitioner also
argues, “[t]his ‘tuple naming’ functionality is analogous to the example
provided in the ’115 Patent of ‘solution_limit(N),’ in which ‘N’ modifies
how many solutions are requested, and is not found in the KQML Nwana
reference that was before the examiner.” Id. (citing Ex. 1001, 11:16–42;
Ex. 1020; Ex. 1003 ¶ 258). Petitioner also asserts that FIPA97 discloses two
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other parameters—“:protocol” when used with the “call for proposals”
performative and “:conversation-id”—that affect the meaning of a message.
Id. at 40–41 (citing Ex. 1007, 13–14, 46–49; Ex. 1003 ¶¶ 261–265).
Patent Owner asserts that FIPA97 does not teach parameters
“refin[ing] . . . events,” as recited in the claim, because the parameters of
FIPA97 cited by Petitioner does not affect the meaning of the message.
Resp. 97–98. In particular, Patent Owner contends that FIPA97’s
“:receiver” parameter of the FIPA97 “inform” message relied upon by
Petitioner is no different from KQML’s “:receiver” parameter for the KQML
“tell” message in that both modify the message but do not affect the meaning
of the message. Id. at 98–99 (citing Ex. 1007, 12; Ex. 1020, 5). Patent
Owner asserts that FIPA97’s “:receiver” parameter does not affect the
meaning of the FIPA97 “inform” message because “the result of this
parameter is only that the message is multicast; i.e., it is ‘sent to each agent
named in the tuple.’” Id. at 100. According to Patent Owner, “the content
of the message is unchanged; the only thing that changes is who (as in,
recipient) receives the message.” Id. at 101.
The portion of FIPA97 cited by Petitioner is reproduced below.
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Ex. 1007, 13. Pointing to this disclosure in FIPA97, Petitioner asserts that
the “receiver” parameter affects the meaning of the event by affecting
“whether the performative communicates the message to a single agent, a
selection of agents, or if [the message is] broadcast to every agent.” Reply
56 (citing Ex. 1007, 13). According to Petitioner, “in FIPA97, an event
using ‘inform’ can mean three or more different things (i.e., inform (1) one
person, (2) a select group of people, (3) everybody) depending on the value
of just that parameter.” Id.
We agree with Petitioner’s argument and disagree with Patent
Owner’s argument. As shown above in the portion of FIPA97 relied on by
Petitioner, FIPA97 describes the “meaning” of the message affected by the
“:receiver” parameter (under the column heading “Meaning:”) as follows:
Note that the recipient may be a single agent name, or a tuple of
agent names. This corresponds to the action of multicasting the
message. Pragmatically, the semantics of this multicast is that
the message is sent to each agent named in the tuple, and that the
sender intends each of them to be recipient of the CA encoded in
the message. For example, if an agent performs an inform act
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with a tuple of three agents as receiver, it denotes that the sender
intends each of these agent to come to believe the content of the
message.
Ex. 1007, 13 (emphases added). We agree with Petitioner this passage
describes, under the column heading “Meaning,” the meaning of the
message modified or affected by the “:receiver” parameter.
Patent Owner argues that the FIPA97 “:receiver” parameter does not
change “the content of the message” and that “the only thing that changes is
who (as in, recipient) receives the message.” Resp. 101. Patent Owner
contends that, in contrast, the solution_limit(N) parameter of the ’115 patent
“modifies the actual request/communicative act/performative itself—i.e.,
evost solve, because it imposes a modification on the limits of solutions
presented in response to a request.” Id. at 102 (citing Ex. 2032 ¶161).
We are not persuaded by Patent Owner’s argument. First, we disagree
with Patent Owner that the FIPA97 “:receiver” parameter changes only
“who (as in, recipient) receives the message.” As described in FIPA97, the
“:receiver” parameter does not merely specify “who receives the message,”
e.g., agent A as opposed agent B. Rather, as persuasively explained by
Petitioner, the “:receiver” parameter affects the qualitative aspect of the
message—i.e., whether to inform (1) one agent, (2) a select group of agents,
or (3) every known agent. See Reply 56.
In addition, Patent Owner does not explain adequately why the
solution_limit(N) parameter of the ’115 patent specifying the number of
agents to be queried “modifies the actual request/communicative
act/performative itself” but the “:receiver” parameter of FIPA97 specifying
the number of agents to which to send a message does not. See Resp. 100–
101. We agree with Petitioner that Patent Owner does not identify “a
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practical distinction between limiting the number of agents to be queried
(solution_limit(N)), and querying a selection of agents (:receiver).” Reply
57.
Next, Patent Owner contends that FIPA97 does not teach parameters
“refin[ing] . . . events,” as recited in the claim, because FIPA97’s “:receiver”
parameter is the same as or similar to the KQML “:receiver” parameter,
which does not modify the meaning of a message. Resp. 98–99 (citing
Ex. 1007, 12; Ex. 1020, 5). In support of its argument, Patent Owner cites a
page from Dr. Finin’s presentation slides at an unidentified meeting or class,
which compares “KQML tell and FIPA ACL inform.” Id. 99–100 (citing
Ex. 2019, 15; Ex. 2013, 132:6–22.). Patent Owner also cites the testimony
from Dr. Finin at his deposition that “the general idea of agent
communication language that was embodied in KQML is similar to the one
that is embodied in FIPA.” Id. at 100 (citing Ex. 2012, 32:10–17).
Patent Owner, however, does not discuss the disclosure of
KQML/Nwana (Ex. 1020) sufficiently (other than pointing to the similarity
of the format between the “:receiver” parameter of KQML and FIPA97) or
explain adequately why KQML’s “:receiver” parameter is similar to the
FIPA97 “:receiver” parameter. See Resp. 98–100. For example, Patent
Owner does not explain whether KQML’s “:receiver” parameter specifies,
similar to FIPA97, that “the recipient may be a single agent name, or a tuple
of agent names,” that “the message is sent to each agent named in the tuple,”
and that “the sender intends each of them to be recipient of the message.”
See id.; Ex. 1007, 13 (emphasis added). The general statements from
Dr. Finin (or a slide purportedly from his unidentified presentation) cited by
Patent Owner (Resp. 99–100 (citing Ex. 2019, 15; Ex. 2013, 132:6–22,
32:10–17) regarding the alleged similarity between KQML and FIPA97 at a
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general level are simply insufficient to override the specific disclosures in
FIPA97 cited by Petitioner regarding the meaning of the message modified
or affected by the FIPA97 “:receiver” parameter.
Patent Owner also cites testimony from Petitioner’s declarant,
Dr. Lieberman, as “confirm[ing]” that the FIPA97 “:receiver” parameter
does not change “the content of the message” and that “the only thing that
changes is who (as in, recipient) receives the message.” Resp. 101 (citing
Ex. 2014, 110:14–111:16, 168:5–12). The cited testimony of
Dr. Lieberman, however, discusses FIPA97’s messages and multicasting in
general (responding to general questions from Patent Owner’s counsel) and
does not discuss the specific disclosure in FIPA97 cited by Petitioner
regarding the meaning of the message modified or affected by the FIPA97
“:receiver” parameter. See Ex. 2104, 108:4–111:16, 168:5–12. Thus, we
find the testimony of Dr. Lieberman cited by Patent Owner to be
unpersuasive (if not misleading) to “confirm” that the FIPA97 “:receiver”
parameter does not change “the content of the message” and that “the only
thing that changes is who (as in, recipient) receives the message.” See Resp.
101.
Next, Patent Owner cites 9 paragraphs from the Declaration of
Dr. Cohen (Ex. 2033) to argue that “FIPA97 does not contain any
conversational layer parameters that affect the semantics of FIPA97
messages.” Resp. 103 (citing Ex. 2033 ¶¶ 80–89).23 Patent Owner,
however, does not discuss Dr. Cohen’s testimony in the Patent Owner
Response or explain how Dr. Cohen’s testimony supports its contention. See

23 Patent Owner’s citation to the Cohen Declaration appears to be mistaken
since the last paragraph of Cohen Declaration is paragraph 88.
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id. Thus, to the extent Petitioner purports to rely on Dr. Cohen’s testimony,
this amounts to improper incorporation by reference in violation of
37 C.F.R. § 42.6(a)(3). Accordingly, we decline to consider the cited
paragraphs from the Cohen Declaration. We note, nonetheless, that
Dr. Cohen’s testimony appears to dwell in generalities, e.g., citing the works
of logicians/philosophers Tarski and Frege (see Ex. 2033 ¶¶ 80–81), and
discusses tuples and multicasting in general terms (see id. ¶¶ 85–88).
Lastly, Patent Owner contends that the limitation “the parameter lists
further refine the one or more events” requires “the parameters of an event
(or message) can refine the message or goal itself” (Resp. 97) or “change the
nature of the communicative act itself” (id. at 102). Although it is not
entirely clear what Patent Owner argues,24 to the extent Patent Owner argues
“refin[ing]” a messages or goal requires changing the message or goal itself,
we disagree with Patent Owner’s argument. As discussed above, in a
section titled “Refining Service Requests,” the ’115 patent describes
examples of “parameters” associated with a request or goal that “refine the
request’s meaning,” including the “reply parameter” that specifies whether
solutions are to be returned synchronously or asynchronously, and the
“cache parameter” that specifies local caching of facts related to the request.
See Ex. 1001, 15:49–58. These parameters do not appear to change the
request itself but, rather, specify how the request should be handled—e.g.,
synchronous response, local caching, etc. Thus, we are not persuaded by
Patent Owner’s argument that the claim requires the recited “parameters”

24 As discussed above, Patent Owner does not dispute Petitioner’s proposed
construction of the term “the parameter lists further refine the one or more
events.” See Resp. 24–38.
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“refine the message or goal itself” (Resp. 97) or “change the nature of the
communicative act itself” (id. at 102). Such an interpretation, which
“excludes a [disclosed] embodiment from the scope of the claim is rarely, if
ever, correct.” Broadcom Corp. v. Emulex Corp., 732 F.3d 1325, 1333 (Fed.
Cir. 2013) (quoting Accent Pkg., Inc. v. Leggett & Platt, Inc., 707 F.3d 1318,
1326 (Fed. Cir. 2013)) (citing Phillips, 415 F.3d at 1312–13).
Based on the foregoing and upon considering the complete record, we
determine that Petitioner has shown sufficiently that FIPA97 teaches
“wherein the parameter lists further refine the one or more events,” as
recited in claim 1. Based on the complete record and for the reasons
explained by Petitioner, we determine that Petitioner has shown sufficiently
that FIPA97 teaches “a layer of conversational protocol defined by event
types and parameter lists associated with one or more of the events, wherein
the parameter lists further refine the one or more events,” as recited in
claim 1.
iv. Content Layer Comprising Goals and Triggers
Claim 1 recites that the “inter-agent language” includes “a content
layer comprising one or more of goals, triggers and data elements associated
with the events.” Petitioner asserts that FIPA97 teaches the recited “content
layer” because FIPA97 describes various rules and standards governing the
content that may be embedded within messages (“a content layer”). Pet. 42
(citing Ex. 1007, 3, 9, 14–16). Petitioner argues that the ’115 patent
consistently explains that the “content layer” of the disclosed ICL “consists
of the specific goals, triggers, and data elements that may be embedded
within various events.” Id. at 9 (Ex. 1001, 11:13–15).
Petitioner also contends that FIPA97 teaches “a content layer
comprising one or more of goals . . . associated with the events” because in
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FIPA97 “goals can be communicated among agents through the use of an
achieve domain-language primitive.” Pet. 42 (emphasis added) (citing
Ex. 1007, 81).
Petitioner asserts that FIPA97 also teaches “data elements associated
with the events” because FIPA ACL supports content expression through
objects and other data (“data elements”) associated with various
performatives. Pet. 43 (citing Ex. 1007, 14).
(1) Triggers
Petitioner asserts that a “trigger” recited in claim 1 is “a general
mechanism for requesting some action be taken when one or more
conditions is met.” Pet. 11 (citing Ex. 1001, 21:21–22:31; Ex. 1003 ¶¶ 80–
81). Patent Owner does not dispute Petitioner’s proposed meaning of
“trigger” (see Resp. 24–38) and argues that FIPA97 does not teach triggers
under Petitioner’s interpretation of the term (see id. at 107–108). We adopt
this undisputed interpretation of “trigger” for this Final Written Decision
because the construction is consistent with the disclosure in the
Specification. See Ex. 1001, 21:22–24 (“triggers [provide] a general
mechanism for requesting some action be taken when a set of conditions is
met”).
Petitioner asserts that FIPA97 discloses “triggers” for various
performative actions within the content layer, including for use with the
performative “accept-proposal” which “informs the receiver that it intends
that (at some point in the future) the receiving agent will perform the action,
once the given precondition is, or becomes, true.” Pet. 43 (emphasis added)
(citing Ex. 1007, 23). Petitioner argues that FIPA97 also discloses that the
performative “propose” can be used “to make a proposal or respond to an
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existing proposal during a negotiation process by proposing to perform a
given action subject to certain conditions being true.” Id. (emphasis added)
(citing Ex. 1007, 34; Ex. 1003 ¶¶ 277–279).
Petitioner argues that the ’115 patent describes “triggers” as
“providing a general mechanism for requesting some action be taken when a
set of conditions is met,” and that such triggers “preferably specif[y] at least
a condition and an action . . . [t]he condition indicates under what
circumstances the trigger should fire, and the action indicates what should
happen when it fires.” Pet. 11 (emphases added) (citing Ex. 1001, 21:21–
34).
Patent Owner contends that the portions of FIPA97 cited by Petitioner
do not describe “a settable trigger that kicks in when a specified event takes
place.” Resp. 108. Patent Owner asserts that the communicative acts (or
performative actions) cited by Petitioner instead are “performatives that
contain parameters dictating what the associated action is.” Id. at 107 (citing
Ex. 2032 ¶¶ 168–169).
Patent Owner also cites 35 paragraphs from the Cohen Declaration in
support of its argument. Id. at 108 (citing Ex. 2033 ¶¶ 30–64). Patent
Owner, however, does not discuss Dr. Cohen’s testimony in the Patent
Owner Response or explain how Dr. Cohen’s testimony supports its
contention. See id. at 107–108. Thus, to the extent Petitioner purports to
rely on Dr. Cohen’s testimony, this amounts to improper incorporation by
reference in violation of 37 C.F.R. § 42.6(a)(3). Accordingly, we decline to
consider the cited paragraphs from the Cohen Declaration.
Petitioner argues that the performative “accept-proposal” “informs the
receiver that it intends that (at some point in the future) the receiving agent
will perform the action, once the given precondition is, or becomes, true.”
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Reply 63 (citing Ex. 1007, 23). Petitioner cites the following testimony
from Dr. Lieberman:
[T]he “precondition” is sent to an agent through the “content
layer,” then at some future point when that “precondition” is met
the receiving agent will “trigger” and take an action based upon
the information encoded in the “content layer” of the message.
EX1007, 23.
Id. (citing Ex. 1003 ¶ 276). Pointing to the description in the cited portion of
FIPA97, Petitioner argues
[A]s explained by Dr. Lieberman, and shown in FIPA97, the
performative “accept-proposal” (“[a] general mechanism for
requesting”) will take an action—in this example, streaming a
multimedia channel (“some action be taken”)—when “the
customer is ready” (“when one or more conditions is met”).
Further, the example above shows how this trigger information
is stored within the “content layer.”
Id. at 64 (reproducing the description of the performative “accept-proposal”
in Ex. 1007, 23).
Petitioner contends that Dr. Lieberman and the Petition describe many
other possible triggers, including the “propose” performative and the
“request-when” performative. Id. at 65. Petitioner asserts that the “propose”
performative “informs the receiver that the proposer will adopt the intention
to perform the action once the given precondition is met” (id. (citing
Ex. 1007, 34; Ex. 1003 ¶¶ 277–279; Pet. 43)) and that the “request-when”
performative is used when “[t]he sender wants the receiver to perform some
action when some given proposition becomes true” (id. (citing Ex. 1007,
40; Ex. 1003 ¶ 414; Pet. 63–64)). Petitioner points to the description of the
“request-when” performative in FIPA97 and argues that the performative
“request-when” (“[a] general mechanism for requesting”) will take an
action—in this example, sending a message (“some action be taken”)—
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when “an alarm occurs” (“when one or more conditions is met”). Id. at 66.
Petitioner concludes that FIPA97, therefore, discloses multiple “triggers”
recited in claim 1. Id.
Patent Owner does not dispute Petitioner’s responsive arguments in
the Reply, but instead contends that Petitioner’s arguments are presented
“too late” and that “Petitioner cannot fix the deficiencies of its Petition on
Reply.” Sur-reply 54. To the extent Patent Owner argues that Petitioner’s
arguments in the Reply is improper new arguments outside the scope of a
proper reply, we disagree. As discussed above, Petitioner’s arguments in the
Petitioner’s Reply on whether FIPA97 teaches the “triggers” recited in the
claim are directly responsive to Patent Owner’s arguments raised in the
Patent Owner Response.
Based on the complete record, we determine that Petitioner has shown
sufficiently that FIPA97 teaches “triggers” recited in claim 1.
In sum, based on the complete record, we determine that Petitioner
has demonstrated sufficiently that FIPA97 teaches the claimed “expandable,
platform-independent, inter-agent language” including “a layer of
conversational protocol” and “a content layer,” notwithstanding these
arguments from Patent Owner.
d. Receiving a Request for Service in an Arbitrarily Complex
Goal Expression
The second step of claim 1 recites “receiving a request for service as a
base goal in the inter-agent language, in the form of an arbitrarily complex
goal expression.” Ex. 1001, 29:25–27. Petitioner relies on Kiss to teach the
“receiving a request for service” step and combines Kiss’s teaching with
FIPA97’s ACL to teach “a request for service . . . in the form of an
arbitrarily complex goal expression.” Pet. 43–47.
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i. Receiving a Request for Service
Petitioner asserts that Kiss teaches “receiving a request for service”
because the reference describes that a “user agent” receives a “query” from a
user, and then “parses the user inquiry and directs the parsed inquiry to a
metaagent 119 for action.” Pet. 44 (citing Ex. 1005, 8:28–34). Petitioner
points to the example process depicted in Figures 8–20 of Kiss as showing
how a “problem presented by a user is solved through distributed
inferencing.” Id. (citing Ex. 1005, 12:21–22). Petitioner asserts that the
initial request illustrated in Figure 8 (not reproduced herein) “when the user
asks of the user agent 705 ‘what is the effect of increasing sales by 20%’?
(FIG.8)” is a “base goal” because it is the basic request initiated by the user
that inspires a number of additional, more particular requests in order to be
satisfied. Id. at 44–45 (citing Ex. 1005, 12:23–26, Fig. 8).
ii. Arbitrarily Complex Goal Expression
As discussed above in Section III.B. and the Institution Decision,
based on the definitions provided in the ’115 patent, we construe “arbitrarily
complex goal expression” to mean “a goal expressed in a language or syntax
that allows an expression, when appropriate or when desired, that expresses
multiple sub-goals and can potentially include more than one type of logical
connector (e.g., AND, OR, NOT), and/or more than one level of logical
nesting (e.g., use of parentheses), or the substantive equivalent, although not
every goal is itself necessarily complex.” Inst. Dec. 35–37. Petitioner
argues that this definition of “arbitrarily complex goal expression” does not
require multiple sub-goals to be expressed within the request, but instead
requires only that the goal be expressed in a language “that allows the
expression of multiple sub-goals . . . .” Pet. 45.
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Petitioner asserts that FIPA ACL allows the expression of multiple
sub-goals, which can potentially include more than one type of logical
connector and/or more than one level of logical nesting (e.g., use of
parentheses), or the substantive equivalent, because FIPA97 “allows the
construction of s-expressions of arbitrary depth and complexity.” Id. (citing
Ex. 1007, 15). Petitioner argues that FIPA97 also discloses complex “goal
expressions” that “express multiple sub-goals” and which may also include
“logical nesting” using parentheses. Id. at 46 (citing Ex. 1007, 40, 41).
Petitioner contends that, in the combined system of Kiss and FIPA97,
the request discussed above— “What is the effect of increasing sales by
20%?”—is an “arbitrary complex goal expression” because it is a goal
expressed in FIPA ACL. Id.
Patent Owner does not specifically dispute that Kiss teaches this
“receiving a request for service” limitation. See generally Resp. Based on
the complete record and for the reasons explained by Petitioner, we are
persuaded that Petitioner has demonstrated sufficiently that Kiss teaches
“receiving a request for service as a base goal in the inter-agent language, in
the form of an arbitrarily complex goal expression,” as recited in claim 1.25
e. Dynamically Interpreting the Arbitrarily Complex Goal
Expression
Claim 1 recites “dynamically interpreting the arbitrarily complex goal
expression,” the act of interpreting comprising “generating one or more
sub-goals expressed in the inter-agent language,” “constructing a goal

25 We also find that Patent Owner has waived any argument directed to this
claim limitation. See Paper 16, 7.
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satisfaction plan,” and “dispatching each of the sub-goals to a selected client
agent for performance.” Ex. 1001, 29:28–44.
Petitioner contends that Kiss teaches “dynamically interpreting the
arbitrarily complex goal expression,” as recited in claim 1. Pet. 47–49.
Petitioner argues
Kiss discloses that, in response to a request for service, the “meta
agent 119 formulates a goal statement for the problem-solving
phase of the process, then formulates a solution plan for the
problem” and “dynamically assesses the problem and its solution
states (between users and the knowledge agents 121), divides the
problem, and assigns the appropriate knowledge agents 121 to
work on the solution.”
Id. at 47–48 (emphasis added) (citing Ex. 1005, 8:32–48).
In addition, Petitioner explains how Kiss interprets the exemplary
“arbitrary complex goal expression” discussed above—“What is the effect of
increasing sales by 20%?”—including the meta agent formulating a plan to
respond to the request, identifying other agents and knowledge modules that
could assist in the response, and doing both dynamically as additional
information is obtained. Id. at 48 (citing Ex. 1005, 12:21–14:29, Figs. 8–
20). Petitioner further provides a detailed description of how this example
goal expression is dynamically interpreted in Kiss. Id. at 48–49 (citing
Ex. 1005, 12:29–14:30, Figs. 9–11, 13–20).
Patent Owner does not specifically dispute that Kiss teaches this
“dynamically interpreting the arbitrarily complex goal expression”
limitation. See generally Resp. Based on the complete record and for the
reasons explained by Petitioner, we are persuaded that Petitioner has
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demonstrated sufficiently that Kiss teaches “dynamically interpreting the
arbitrarily complex goal expression,” as recited in claim 1.26
f. Generating One or More Sub Goals Expressed in the Inter-
agent Language
Petitioner contends that Kiss teaches “generating one or more
sub-goals expressed in the inter-agent language,” as recited in claim 1,
because Kiss discloses, in the example “What is the effect of increasing sales
by 20%?” discussed above, that the process of responding to the user’s
request includes several additional requests for service (“sub-goals”) to
various agents, including two sub-requests each from the sales agent and the
meta agent, and three sub-requests from the production agent, where each of
the sub-requests is made in FIPA ACL. Pet. 49–50 (citing Ex. 1005, 12:54–
56, 13:25–27, 13:37–39, 13:56–57, 14:3–5). According Petitioner, each of
these sub-requests is a “sub-goal” because each is a subset of the process of
responding to the user’s base request—“base goal”—of “what is the effect of
increasing sales by 20%?” Id. at 50. Petitioner also argues that Kiss’s meta-
agent is capable of “formulating a sub-problem query.” Id. (citing Ex. 1005,
11:15–16).
Patent Owner does not specifically dispute that Kiss teaches this
“generating one or more sub-goals expressed in the inter-agent language”
limitation. See generally Resp. Based on the complete record and for the
reasons explained by Petitioner, we are persuaded that Petitioner has

26 We also find that Patent Owner has waived any argument directed to this
claim limitation. See Paper 16, 7.
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demonstrated sufficiently that Kiss teaches “generating one or more
sub-goals expressed in the inter-agent language,” as recited in claim 1.27
g. Constructing a Goal Satisfaction Plan Including Delegation
of Sub-goal Requests
Claim 1 recites “constructing a goal satisfaction plan,” the goal
satisfaction plan including “a suitable delegation of sub-goal requests” and
“dispatching each of the sub-goals to a selected client agent for
performance.” Ex. 1001, 29:32–43. Petitioner contends that Kiss teaches
each of these limitations. Pet. 50–54.
i. Goal Satisfaction Plan
As discussed above in Section III.B.1., we construe the term “a goal
satisfaction plan” to mean “a plan for satisfying a goal” for this Final
Written Decision.
Petitioner asserts that Kiss teaches “constructing a goal satisfaction
plan” because Kiss describes that the meta-agent “formulates a goal
statement for the problem-solving phase of the process,” then “formulates a
solution plan for the problem.” Pet. 50 (citing Ex. 1005, 8:33–34, 5:30–64,
12:25–40, Figs. 8–20). Petitioner contends that Figures 8–20 of Kiss
illustrate adding tasks to an agenda, i.e., constructing a plan, to satisfy the
user request (i.e., a “goal”) “what is the effect of increasing sales by 20%?”
Id. at 50–51 (citing Ex. 1005, 13:27–29, Figs. 8–20).
Patent Owner contends that Kiss does not teach the claim “goal
satisfaction plan” because Kiss does not disclose “the use of any reasoning,
optimization, or taking into account any advice parameters or constraints.”

27 We also find that Patent Owner has waived any argument directed to this
claim limitation. See Paper 16, 7.
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Resp. 89. Patent Owner also argues that Kiss “does not have the capability
of formulating an ‘optimal or near-optimal’ ‘goal satisfaction plan’ utilizing
reasoning as described in the ‘115 patent.” Id. at 91 (citing Ex. 2032 ¶ 141).
These arguments are predicated on Patent Owner’s proposed construction of
“goal satisfaction plan” to mean “a plan for the satisfaction of a complex
goal expression in an optimal or near-optimal manner that is consistent with
any advice parameters or constraints.” See id. at 28. As discussed above in
Section III.B.1., we disagree with Patent Owner that the claim term “goal
satisfaction plan” is limited as Patent Owner contends. Thus, for the reasons
explained above in Section III.B.1., we disagree with Patent Owner’s
argument that Kiss does not disclose the “goal satisfaction plan” recited in
claim 1.
Based on the complete record, we determine that Petitioner has shown
sufficiently that Kiss teaches “constructing a goal satisfaction plan,” as
recited in claim 1.
iii. Delegation of Sub-goal Requests Using
Reasoning
Claim 1 recites that “the goal satisfaction includes: a suitable
delegation of sub-goal requests to best complete the requested service
request—by using reasoning that includes one or more of
domain-independent coordination strategies, domain-specific reasoning, and
application-specific reasoning comprising rules and learning algorithms.”
Ex. 1001, 29:32–39.
(1) Delegation of Sub-goal Requests
Petitioner asserts that Kiss teaches a meta-agent that makes “a suitable
delegation of sub-goal requests to best complete the requested service
request,” as recited in claim 1, because Kiss identifies and queries various
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agents (e.g., sales agent, production agent) “who best to respond” to new
sub-requests for specific information as they arrive. Pet. 51 (citing
Ex. 1005, 12:21–14:30, Figs. 8–20). Petitioner contends that in Kiss, the
meta-agent “contains knowledge of problem solving methodologies and
distributed inferencing procedures” and is further responsible for allocating
“tasks to the knowledge agent layer.” Id. (citing Ex. 1005, 5:24–27, 3:26–
27). Petitioner asserts that Kiss’s meta-agent uses these methodologies in
conjunction with the agent registry “to dynamically bring available
knowledge resources together” (“suitable delegation”) by identifying “those
other resources capable of furthering the problem-solving process” (“best
complete the requested service request”). Id. (citing Ex. 1005, 5:27–29).
Patent Owner contends that Kiss does not teach “optimization of any
kind.” Resp. 89. Patent Owner asserts that Kiss’s meta agent employs a
trial and error method—it jumps into “executing the solution plan even
before the plan is complete” and when errors are encountered, it backtracks
or takes a new action. Id. at 90–91 (citing Ex. 1005 5:39–46). Patent Owner
argues that Kiss is “forced” to go through this trial-and-error process
because it does not have the capability of formulating an “optimal or near-
optimal” “goal satisfaction plan.” Id. at 91.
As discussed above in Section III.B., claim 1 does not recite an
“optimal or near-optimal” “goal satisfaction plan.” Instead, claim 1 recites
“a suitable delegation of sub-goal requests to best complete the requested
service request,” which may relate to the “optimal or near-optimal” limiting
feature argued by Patent Owner. As discussed in the same section, Patent
Owner asserts that the term “optimal” and “near optimal” has a
well-established meaning in the context of computer engineering, citing a
technical dictionary, which defines “optimization” as “[t]he process of
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finding the best solution to some problem, where ‘best’ accords to prestated
criteria.” Sur-reply 6 (emphasis added) (citing Ex. 2078, 3). Thus, contrary
to Patent Owner’s argument, the trial and error process of Kiss is a “process
of finding the best solution” to a problem under Patent Owner’s definition of
“optimization.” See Ex. 1005, 5:21–29 (“The meta agent 119 contains
knowledge of how to dynamically bring available knowledge resources
together as and when needed to provide a response to the inquiry.”), 5:32–45
(“The meta agent 119 is responsible for formulating a dynamic “solution
plan” for the distributed inferencing to be performed by the system 100, and
allocates tasks to the knowledge agent layer 109 in furtherance of the
solution plan. The planning capability of the meta agent 119 includes the
ability to formulate parallel sub-plans and perform iterative and recursive
procedures. . . . The meta agent 119 is capable of backtracking or
replanning to permit escape during plan execution from dead-end or
otherwise unproductive search paths.” (emphases added)); Pet. 51 (citing
Ex. 1005, 5:24–29).
We note that claim 1 does not recite “to best complete the requested
service request at the very first try.” Thus, Kiss’s formulation of a dynamic
“solution plan” (and allocation of tasks) that includes “sub-plans” to perform
the trial and error process for finding the best solution to a problem satisfies
“delegation of sub-goal requests to best complete the requested service
request,” as recited in claim 1.
Patent Owner also argues that it explained during prosecution how the
facilitating engine is able to use reasoning to delegate the sub-goals to
service providing agents in such a way as “to best complete the requested
service request,” as follows:
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For example, assume that several agents are able to roast coffee.
The facilitating engine is able to use reasoning to delegate the
sub-goal task of roasting coffee to the service-providing agent
that can roast beans in the least amount of time because the
facilitating engine has reasoned that the least amount of time
taken to make coffee is the best way to accomplish the base goal
of making coffee.
Resp. 90 (citing Ex. 1002, 173).
In response, Petitioner argues that Kiss similarly optimizes its solution
plan based on time. Reply 49–50. Petitioner asserts that Kiss explains that
as part of its matchmaking functionality (which is utilized in the solution
plan), the agent service layer will create “mappings for each knowledge
module 123 relating the capabilities to interests” and that these mappings are
used “to optimize problem solutions.” Id. at 49 (citing Ex. 1005, 7:8–11).
According to Petitioner, Kiss describes that when utilizing “real time”
inferencing, the meta-agent “may deactivate the knowledge agent whose
responses do not meet time delay” or prioritize “knowledge agents that have
a history of rapid response or that can tailor their problem solving to real
time.” Id. at 49–50 (citing Ex. 1005, 7:65–84). We agree with Petitioner
that Kiss’s delegation and prioritization of agents based on their speed of
response satisfies “delegation of sub-goal requests to best complete the
requested service request,” as recited in claim 1.
(2) Using Reasoning
Claim 1 recites that “a suitable delegation of sub-goal requests” is
accomplished “by using reasoning that includes one or more of
domain-independent coordination strategies, domain-specific reasoning, and
application-specific reasoning comprising rules and learning algorithms.”
Petitioner asserts that the ’115 patent describes speech recognition, natural
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language processing, and email as “domain-independent technologies,” and
travel planning and reservations agents as “domain specific.” Pet. 52 (citing
Ex. 1001, 6:51–55).
Citing the testimony of Dr. Lieberman, Petitioner argues that the
operations disclosed in Kiss with respect to Figures 8–20 represent
“reasoning that includes one or more of domain-independent coordination
strategies” because the meta agent, by identifying and querying several
different specialized (i.e., domain-specific) agents, is carrying out a strategy
that is domain independent (i.e., is not limited to a particular area of
knowledge but instead seeks information regarding sales, production,
marketing, facilities, and materials) and coordinates the action of those
different domain-specific agents across several domains. Pet. 52 (citing
Ex. 1003 ¶¶ 331–332). Petitioner argues that Kiss’s meta-agent can employ
a distributed inferencing scheme that “assembles a problem-specific rule
network as a distributed object under control by a meta agent.” Id. at 52–53
(citing Ex. 1005, 7:21–26). Petitioner contends that application of such a
problem-specific set of rules to a request constitutes both “domain-specific
reasoning” (because the problem is the domain) and “application-specific
reasoning” (because the problem is the application). Id. at 53 (citing
Ex. 1003 ¶ 333).
As noted above, claim 1 recites that “the goal satisfaction plan
includes: a suitable delegation of sub-goal requests to best complete the
requested service request—by using reasoning . . . .” In view of this claim
language, Kiss’s inference process using inferencing schemes may be
considered part of a “suitable delegation” which is a recited element of the
claimed “goal satisfaction plan.”
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We additionally note that the portion of Kiss cited by Petitioner
describes that distributed inferencing schemes are based on the use of
“first-order logic.” Ex. 1005, 7:21–23. The same paragraph also describes
using a “theorem-proving engine.” Id. at 7:26–28. We note that both
“first-order logic” and “theorem-proving engine” may be considered
“domain-independent technologies,” similar to speech recognition and
natural language processing technologies described in the ’115 patent.
Patent Owner contends that the “solution plan” of Kiss is not
constructed by “using reasoning” because Kiss’s inferencing schemes is
used only “[a]fter the solution plan is formulated . . . to perform the search
and execution phases.” Resp. 89 (citing Ex. 1005, 8:58–60). In response,
Petitioner asserts that in the Petition it argued that it would have been
obvious to utilize inferencing strategies when constructing the goal
satisfaction plan. Reply 48 (citing Pet. 53). Thus, Patent Owner’s argument
is inapposite because it does not address the combination proposed by
Petitioner. See ClassCo, Inc. v. Apple, Inc., 838 F.3d 1214, 1219 (Fed. Cir.
2016) (“KSR does not require that a combination only unite old elements
without changing their respective functions.”).
As Petitioner also persuasively argues, Petitioner in the Petition
additionally relies on several other ways in which Kiss utilizes reasoning to
construct its solution plan, such as “problem solving methodologies and
distributed inferencing procedures,” how the meta-agent “assigns the
appropriate knowledge agents 121 to work on the solution,” and how the
meta-agent “executes the solution plan by maintaining an agenda,
commitment table, task queue, knowledge manager or equivalent dynamic
control service.” Reply 48 (citing Pet. 50–51; Ex. 1003 ¶¶ 322–325, 331–
335). Petitioner further argues that Kiss’s “iterative and recursive” planning
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is another example of how reasoning is used to construct the solution plan of
Kiss. Id. (citing Pet. 50; Ex. 1003 ¶ 322).
Based on the complete record, we determine that Petitioner has shown
sufficiently that Kiss teaches “a suitable delegation of sub-goal requests to
best complete the requested service request—by using reasoning that
includes one or more of domain-independent coordination strategies,
domain-specific reasoning, and application-specific reasoning comprising
rules and learning algorithms,” as recited in claim 1, notwithstanding the
arguments by Patent Owner.
h. Dispatching Each of the Sub-goals
Claim 1 recites “dispatching each of the sub-goals to a selected client
agent for performance, based on a match between the sub-goal being
dispatched and the registered functional capabilities of the selected client
agent.” Ex. 1001, 29:32–43.
Petitioner asserts that in Kiss
the meta agent dispatches queries (“sub-goals”) to various
specialized agents based on a determination that the targeted
agent possesses a knowledge module appropriate for the query
(“based on a match between the sub-goal being dispatched and
the registered functional capabilities of the selected client
agent.”)
Pet. 54 (citing Ex. 1005, 12:21–14:29, Figs. 8–20). Petitioner argues that
Kiss’s specialized agents are not facilitators (and, therefore, are “client
agents”) because they are not responsible for matching requests, from users
and agents, with descriptions of the capabilities of other agents. Id. (citing
Ex. 1001, 4:64–66, 6:41–43).
Patent Owner does not specifically dispute that Kiss teaches this
“dispatching each of the sub-goals” limitation. See generally Resp. Based
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on the complete record and for the reasons explained by Petitioner, we are
persuaded that Petitioner has demonstrated sufficiently that Kiss teaches
“dispatching each of the sub-goals to a selected client agent for performance,
based on a match between the sub-goal being dispatched and the registered
functional capabilities of the selected client agent,” as recited in claim 1.28
i. Conclusion as to Claim 1
In consideration of the foregoing and based on the complete record,
we are persuaded by Petitioner’s arguments and evidence, notwithstanding
Patent Owner’s arguments, addressed above. Having weighed each of the
Graham factors, including the scope and content of the prior art, the
differences between the prior art and the challenged claim, and the objective
evidence of nonobviousness, we determine that Petitioner has demonstrated
by a preponderance of the evidence that claim 1 is unpatentable under
35 U.S.C. § 103(a) as obvious over the combination of Kiss and FIPA97.
8. Independent Claim 48
Independent claim 48 is directed to an Interagent Communication
Language (ICL) providing a basis for facilitated cooperative task completion
within a distributed computing environment having a facilitator agent and a
plurality of autonomous service-providing electronic agents. Ex. 1001,
34:9–34. Claim 48 reads as follows.
48. [(a)] An Interagent Communication Language (ICL) providing a basis
for facilitated cooperative task completion within a distributed
computing environment having a facilitator agent and a plurality
of autonomous service-providing electronic agents, wherein:
[(b)] the ICL having: a layer of conversational protocol defined by
event types and parameter lists associated with one or more of the

28 We also find that Patent Owner has waived any argument directed to this
claim limitation. See Paper 16, 7.
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events, wherein the parameter lists further refine the one or more
events; and a content layer comprising one or more of goals,
triggers and data elements associated with the events;
[(c)(i)] the ICL having one or more features from a set of features
comprising: enabling agents perform queries of other agents;
[(c)(ii)] enabling agents to exchange information with other [a]gents;
and
[(c)(iii)] enabling agents to set triggers within other agents; and
[(d)] the ICL having a syntax supporting compound goal expressions
[(e)] wherein said compound goal expressions are such that goals
within a single request provided according to the ICL syntax may
be coupled by one or more operators from a set of operators
comprising: a conditional execution operator; and a parallel
disjunctive operation that indicates that disjunct goals are to be
performed by different agents.
Ex. 1001, 29:10–44 (numbering and formatting designated by Petitioner; see
Pet. Att. C).
a. Preamble
As noted above, the preamble of claim 48 recites “[a]n Interagent
Communication Language (ICL) providing a basis for facilitated cooperative
task completion within a distributed computing environment having a
facilitator agent and a plurality of autonomous service-providing electronic
agents.” 29
Petitioner asserts the combined teachings of Kiss and FIPA97 satisfy
the recited “Interagent Communication Language (ICL) providing a basis for
facilitated cooperative task completion within a distributed computing
environment” portion of the preamble for the reasons stated in its Petition at
§§ V.C, VI.A.1.a, VI.A.1.b(ii). Pet. 58. These portions of the Petition refer

29 Because Petitioner shows that the recitations in the preamble are satisfied
by Kiss, we need not determine whether the preamble is limiting. See Vivid
Techs., 200 F.3d at 803.
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to Petitioner’s arguments and evidence with respect to: 1) Petitioner’s
proposed combination of Kiss and FIPA97v1 (see Pet. 27–31 (§§ V.C)); 2)
the preamble of independent claim 1 (see Pet. 32–33 (§§ VI.A.1.a)); and 3)
the inter-agent language of claim 1 (see Pet. 34–35 (§§ VI.A.1.b(ii)).
Based upon our consideration and analysis of the parties’ arguments
and evidence presented with respect to these portions of the Petition (see,
e.g., §§ II.C.4), as well as our consideration of the parties’ arguments and
evidence presented with respect to similar claim language recited in
independent claim 1 (see, e.g., §§ II.C.6.c), we find that the combined
teachings of Kiss and FIPA97 satisfy this portion of the preamble of claim
48.
With respect to the remaining portion of claim 48’s preamble,
Petitioner asserts Kiss discloses “a facilitator agent and a plurality of
autonomous service-providing electronic agents,” because Kiss describes a
“hierarchical knowledge management system having three general layers: a
user interface layer, a meta-agent layer, and a knowledge agent layer.” Id.
(citing Ex. 1005, 3:17–20). Petitioner relies on Kiss’ description that
“[e]ach layer in the system includes one or more intelligent agents
responsible for one portion of the distributed problem-solving inferencing
process.” Pet. 58–59 (citing Ex. 1005, 3:20–22). Petitioner points out that
Kiss describes a meta-agent layer that “analyzes user queries or problem
formulations from the user interface layer, allocates tasks to the knowledge
agent layer, resolves conflicts arising from the knowledge agent layer, and
consolidates (including fusing and deconflicting) results provided by the
knowledge agent layer.” Pet. 59 (citing Ex. 1005, 3:25–29. Petitioner
argues that the “meta agent operates with an agent serviced layer to identify
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relevant capabilities of service providing agents in the system.” Pet. 59
(citing Ex.1005, 3:36–47, 12:1–14:30).
Petitioner argues that “the agent service layer combined with the
meta-agent of Kiss constitutes ‘a facilitator agent’ because it facilitates
cooperation in resolving requests by bi-directionally communicating with
knowledge agents and assigning tasks (sub-goals) to them in order to
coordinate the cooperative completion of tasks.” Pet. 59 (citing Ex. 1005,
12:21–14:30, Figs. 8–20). Petitioner argues that “FIPA97 also discloses a
Directory Facilitator (‘facilitator agent’), which provides analogous
functionality,” and argues that “in the combined system” it would “be
implemented in the meta agent.” Pet. 59 (citing Ex. 1003 ¶¶ 347–351; Ex.
1006, 6–7). Therefore, Petitioner argues, “Kiss discloses a system
composed into meta-agents (facilitator agents) and knowledge agents
(service-providing agents).” Pet. 59 (citing Ex. 1003 ¶ 570).
Patent Owner argues “Kiss and FIPA97 either alone or in combination
do not disclose the specialized functionality and operation of the claimed
’115 Patent’s “facilitator agent.’” Resp. 72. Patent Owner first argues that
“The Kiss meta-agent is not a facilitator.” Id. Patent Owner argues that
“meta-agents are described in the ’115 Patent itself as part of the OAA
architecture and distinct from facilitator agents.” Id. Patent Owner argues
that “[m]eta-agents in the ’115 Patent are client agents as opposed to
facilitating agents.” Id. at 73 (citing Ex. 1001, 6:41–45). Patent Owner
argues, “[t]he Kiss meta-agent is similar to the meta-agent of the ’115
Patent, and does not perform the role of the claimed facilitator.” Id. at 74
(citing Ex. 2032 ¶ 86). Patent Owner asserts that “[t]he Kiss meta-agent, at
best, is a controller that routes queries through the system and presents
results, and it lacks the sophistication and intelligent planning that the
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claimed facilitator performs.” Resp. 74 (citing Ex. 1001, 19:52–53; Ex.
2032 ¶ 88).
Patent Owner further argues that “[t]he claimed facilitator in the ’115
Patent is described as ‘preferably involving three types of processing:
delegation, optimization, and interpretation.’” Resp. 75 (citing Ex. 1001,
19:2–4). “Kiss,” Patent Owner argues, “does not disclose a meta-agent
capable of these processes.” Resp. 75.
Patent Owner argues:
First, the Kiss meta-agent, while it breaks down queries into
questions and passes them to knowledge agents, does not apply
“selective application of global and local constraint and advice
parameters onto the specific sub-goals.” (Ex. 1001, 19:9–10.)
The meta-agent’s processing is a simple decomposition, listing
of tasks on an agenda, and request for execution of the individual
tasks.
Resp. 75 (citing Ex. 2032 ¶ 92).
Second, Patent Owner argues:
Kiss contains no disclosure of optimization— “result[ing] in a
goal whose interpretation will require as few exchanges as
possible, between the facilitator and the satisfying agents, and
can exploit parallel efforts of the satisfying agents.” (Ex. 1001,
19:15–18.) There is no mechanism for the meta-agent to consider
efficiencies or other factors that would result in returning results
in an optimized way. (Ex. 2032 ¶¶ 93–96.) Indeed, the meta-
agent simply relies on the agent service layer to tell it which of
the agents has the knowledge necessary to answer the question,
and then submits to that self-identifying agent.
Resp. 75 (citing Ex. 1005, 12:29–36; Ex. 2032 ¶ 94).
Third, Patent Owner argues:
Kiss’s meta-agent does not use an intelligent method or its own
knowledge resources to interpret capabilities or use strategies or
advice in the coordination of requests to and assembly of results
from satisfying agents. (See Ex. 1001, 19:24–27 (“facilitator uses
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its knowledge of the capabilities of its client agents” and/or
“strategies or advice specified by the requester” when
coordinating requests and assembling responses to interpret and
satisfy a goal); Ex. 2032 ¶ 96.) While there is some mechanism
of deconflicting, there is no disclosure in Kiss that the meta agent
does any processing other than applying rule-driven criteria to
sort through the results.
Resp. 76 (citing Ex. 2032 ¶ 97). “Indeed,” Patent Owner argues, “Kiss
describes a system that the ’115 Patent classifies as the prior art “Distributed
Object Approach,” depicted in Figure 2 of the patent.” Resp. 77 (citing Ex.
2032 ¶ 98).
Patent Owner then goes on to argue that “FIPA97’s Directory
Facilitator is no more than a directory of agent capabilities.” Resp. 78.
Patent Owner argues that while FIPA97’s Directory Facilitator “may provide
agent registry-type functions within a facilitator (see, e.g., Ex. 1001, Fig. 7),
FIPA97 does not disclose any of the robust facilitator functions described in
the ’115 Patent and which are missing from Kiss’s meta-agent.” Resp. 78
(citing Ex. 2032 ¶¶ 101–105).
In its Reply, Petitioner argues that Patent Owner “ignores the actual
Kiss/FIPA97 combination and instead attacks the references individually.”
Reply 35. Petitioner also argues “the combined system of Kiss/FIPA97
discloses all the claimed features of a facilitator agent, so what Kiss chose
to name his facilitator [i.e. “meta-agent”] is plainly immaterial.” Resp. 36
(internal citations omitted).
Petitioner also argues Patent Owner’s “list of the various optional
features of the facilitator agent, (Response, 65–71), are simply not relevant
to the “facilitator agent” as claimed—and in fact, the record evidence
suggests a much broader understanding of that term.” Reply 36. Petitioner
points out that Patent Owner’s expert, Dr. Medividovic defined a facilitator
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agent as “a specialized server agent responsible for coordinating agent
communications and cooperative problem solving.” Reply 36 (quoting Ex.
1129, 79:7–9).
Petitioner argues that the “delegation, optimization, and
interpretation” functionalities Patent Owner claims are missing from the
Kiss meta-agent are limited to a preferred embodiment in the ’115 patent,
and therefore are not relevant to an obviousness analysis. Reply 37 (citing
Resp. 74–75). Petitioner argues that Dr. Medvidovic confirmed these were
functionalities of a preferred embodiment. See Reply 37 (citing Ex. 1129,
54:2–9). In any event, Petitioner argues, the Kiss/FIPA97 combination
teaches delegation under the ordinary meaning of that term. Reply 38 (citing
Ex. 1005, 3:25–27, 12:21–14:30, Figs. 8–20, 5:24–27. Petitioner takes
similar positions with respect to “optimization” and “interpretation.” See
Reply 38–39 (citing Ex. 1005, 7:8–11, 7:65–8:4, 8:5–8, 8:17–23.
With respect to Patent Owner’s criticisms of FIPA97, Petitioner again
points out that Patent Owner is arguing against the references separately
instead of the combination of FIPA97’s Facilitator Agent with Kiss’ meta-
agent described by Petitioner. Reply 39–40. Petitioner also argues that
“FIPA97 does disclose ‘facilitation primitives,’” despite Patent Owner’s
arguments to the contrary. Reply 40.
In its Sur-reply, Patent Owner argues that it is not attacking the prior
art references individually, but rather, it “addresses the disclosures within
each reference, matching what the Petition does.” Sur-reply 36.
With respect to Patent Owner’s argument that “[t]he Kiss meta-agent
is not a facilitator (Resp. 72), Patent Owner argues that “none of Patent
Owner’s arguments rest on the fact that the same words are or are not used
in the asserted references and the ’115 Patent.” Sur-reply 37 (citing Reply
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36). Patent Owner argues that “Dr. Lieberman, relies on similar portions of
the specification to describe his interpretation of the “facilitator agent,” as
Patent Owner used to show facilitator agent functionality in the ’115 patent.
Sur-reply 38.
Patent Owner also argues “the Board must disregard [Petitioner’s]
arguments and evidence” based on any “new citations in Petitioner’s Reply”
“to the Kiss patent that were not cited in support of the facilitator limitation
in the Petition,” and that “even if the Board did consider it, the new evidence
is not on point.” Id. at 40.
We agree with Petitioner. “[One] cannot show non-obviousness by
attacking references individually where . . . the rejections are based on
combinations of references.” Boundary Solns. Inc. v. Corelogic, Inc., 711
Fed. Appx. 627, 631–632 (Fed. Cir. 2017) (quoting In re Keller, 642 F.2d
413, 425 (CCPA 1981).
Petitioner makes clear that it is “the agent service layer [of Kiss]
combined with the meta-agent of Kiss [that] constitutes ‘a facilitator agent’
because it facilitates cooperation in resolving requests by bi-directionally
communicating with knowledge agents and assigning tasks (sub-goals) to
them in order to coordinate the cooperative completion of tasks.” Pet. 59
(citing Ex. 1005, 12:21–14:30, Figs. 8–20). Petitioner explains that:
The meta-agent layer “analyzes user queries or problem
formulations from the user interface layer, allocates tasks to the
knowledge agent layer, resolves conflicts arising from the
knowledge agent layer, and consolidates (including fusing and
deconflicting) results provided by the knowledge agent layer.”
Ex. 1005, 3:25–29. The meta agent operates with an agent
serviced layer to identify relevant capabilities of service
providing agents in the system. Ex. 1005, 3:36–47, 12:1–14:30.
Pet. 59.
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Given Petitioner’s articulation that it is the combination of “the agent
service layer [of Kiss] combined with the meta-agent of Kiss [that]
constitutes ‘a facilitator agent,” Patent Owner argument that “[t]he Kiss
meta-agent is not a facilitator,” is unavailing because it fails to respond to
Petitioner’s combination of the Kiss agent service layer and the Kiss meta-
agent as the recited “facilitator agent.” See Resp. 72. Similarly, Patent
Owner’s argument that “[t]he Kiss meta-agent is similar to the meta-agent of
the ’115 Patent, and does not perform the role of the claimed facilitator,” is
equally unavailing for the same reason. See id. at 74.
Patent Owner makes additional arguments in support of its position
that the Kiss meta-agent is not a facilitator. For example, Patent Owner
argues, “[t]he claimed facilitator in the ’115 Patent is described as
‘preferably involving three types of processing: delegation, optimization,
and interpretation.’ (Ex. 1001, 19:2–4.) Kiss does not disclose a meta-agent
capable of these processes.” See Resp. 75. In addition to being
nonresponsive to Petitioner’s proffered combination, these arguments fail for
another reason—they improperly attempt to read exemplary characteristics
from preferred embodiments in the specification into the claims. Indeed, as
this section of the’115 patent makes clear, “[a] further preferred embodiment
of the present invention incorporates facilitator handling of compound goals,
preferably involving three types of processing: delegation, optimization and
interpretation. Ex. 1001, 19:1–4.
Perhaps more helpful in understanding the nature of a “facilitator
agent” is Patent Owner’s expert, Dr. Medvidovic’s, observation in reference
to Figure 4 of the ’115 patent that “facilitator agent 402” is “a specialized
server agent that is responsible for coordinating agent communications and
cooperative problem-solving.” See Ex. 2032 ¶ 32 (citing Ex. 1001, 6:32–35,
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Fig. 4).30 Indeed, at his deposition, Dr. Medvidovic confirmed that this was
his understanding of a “facilitator agent.” There, Dr. Medvidovic testified,
“if you were asking me define a facilitator agent, I might say it's a
specialized server agent responsible for coordinating agent communications
and cooperative problem solving. That is a definition.” Ex. 1129, 79:15–19.
Based on this understanding of a facilitator agent, Petitioner’s
proposed combination of “the agent service layer combined with the meta-
agent of Kiss constitutes ‘a facilitator agent’ because it facilitates
cooperation in resolving requests by bi-directionally communicating with
knowledge agents and assigning tasks (sub-goals) to them in order to
coordinate the cooperative completion of tasks,” meets the recited
“facilitator agent and a plurality of autonomous service-providing electronic
agents,” because the proposed combination coordinates communications
with agents and the cooperative completion of tasks (problem-solving). See
Pet. 59 (citing Ex. 1005, 12:21–14:30, Figs. 8–20).
b. layer of conversational protocol
Claim 48 also recites, “the ICL having: a layer of conversational
protocol defined by event types and parameter lists associated with one or
more of the events, wherein the parameter lists further refine the one or more
events; and a content layer comprising one or more of goals, triggers and
data elements associated with the events.” Petitioner argues the combination
of Kiss and FIPA97 satisfies this limitation for the reasons stated in the
Petition with respect to claim 1 at §§ VI.A.1.b(ii) (Pet. 34–35), VI.A.1.c
(Pet. 35–41), and VI.A.1.d (Pet. 42–43). Pet. 60.

30 We note for the record that neither party proposed a construction for the
term, “facilitator agent.”
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The recitation of these limitations in claim 48 relating to a layer of
conversational protocol defined by event types and parameter lists, a content
layer, goals, triggers, and data elements are virtually identical to those
recited in claim 1. See Ex. 1001, 29:18–24. For the same reasons set forth,
supra, with respect to our analysis of claim 1’s limitations in Section
II.C.7.c.iii and iv, we determine that Petitioner has shown sufficiently that
the combination of Kiss/FIPA97 teaches an “ICL having: a layer of
conversational protocol defined by event types and parameter lists associated
with one or more of the events, wherein the parameter lists further refine the
one or more events; and a content layer comprising one or more of goals,
triggers and data elements associated with the events” as recited in claim 48.
c. ICL Features
Claim 48 also recites, “the ICL having one or more features from a set
of features comprising: enabling agents perform [sic] queries of other
agents; enabling agents to exchange information with other agents; and
enabling agents to set triggers within other agents.” Id.
i. Agent Queries
Petitioner argues the agents in Kiss are able to “perform queries of
other agents” using each agent’s “inter-agent abstract communications
facilities.” Pet. 60 (citing Ex. 1005, 3:34–36). Petitioner argues Kiss
teaches that the “abstract communication facilities” (“ICL”) allows agent’s
to “negotiate with each other, conduct joint planning, and to collaborate in
the execution of planned tasks.” Pet. 60 (citing Ex. 1005, 3:34–36).
Petitioner argues a Skilled Artisan would understand that to conduct joint
planning and negotiate agents must be able to “perform queries of other
agents.” Pet. 60. Petitioner also argues that Kiss’ agents can communicate
through the agent service layer that facilitates “agent-to-agent interaction.”
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Id. (citing Ex. 1005, 7:13). Petitioner argues that “[i]n a system designed to
facilitate query processing and task completion amongst agents, this ‘agent-
to-agent interaction’ must necessarily include the ability to ‘perform queries
of other agents.’” Pet. 60 (citing Ex. 1003 ¶ 580).
Petitioner also argues Kiss teaches a meta-agent who “analyzes user
queries” and “allocates tasks” to knowledge agents. Pet. 61 (citing
Ex. 1005, 3:25–30. Petitioner argues a “Skilled Artisan would understand
that allocating tasks in a knowledge management system is analogous to
‘queries of other agents.’” Id. (citing Ex. 1003 ¶ 581). Petitioner further
argues “the example of Figures 8 through 20 of Kiss shows the meta agent
both sending queries to and receiving queries from the sales agent and the
production agent.” Pet. 61 (citing Ex. 1005, 12:21–14:29, Figs. 8–20; Ex.
1003 ¶ 581).

ii. Information Exchange
Petitioner argues the agents in Kiss are able to “exchange information
with other agents” using each agent’s “inter-agent abstract communications
facilities.” Pet. 61 (citing Ex. 1005, 3:34–36). Petitioner relies on Figures
7–20 in Kiss that teach agents who “exchange information” with other
agents. Pet. 61 (citing Ex. 1005, Figs. 7–20; Ex. 1003 ¶ 583).
Petitioner argues a Skilled Artisan would understand that each
communication utilizes the agent’s “inter-agent abstract communications
facilities.” Pet. 62 (citing Ex. 1005, 3:34–36). Petitioner also argues a
Skilled Artisan would understand that in a “knowledge management system”
the communication protocol between agents must be able to facilitate the
ability to “exchange information.” Pet. 62 (citing Ex. 1003 ¶ 584).
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iii. Triggers
Petitioner asserts FIPA97 teaches the use of content parameters to “set
triggers within other agents.” Pet. 62. Petitioner argues FIPA97 teaches a
performative accept-proposal; this performative, Petitioner argues, “informs
the receiver” that the “receiving agent” (“other agent”) should “perform the
action,” (i.e., action that takes place in response) once a “given precondition
is, or becomes, true” (i.e., occurrence or failure of a precondition). Pet. 62–
63 (citing Ex. 1007, 23). Therefore, Petitioner argues, the “precondition” is
sent to an agent through the content layer, then at some future point, when
that “precondition” is met the receiving agent will trigger and take an action
based upon the information encoded in the content layer of the message.
Pet. 63 (citing Ex. 1007, 23). In this way, Petitioner argues, “the content
layer and the content parameter can be used to ‘set triggers within other
agents.’” Id.
Patent Owner does not specifically dispute many Petitioner’s
arguments and evidence provided with respect to claim 48 that the
combination of Kiss/FIPA97 teaches an “ICL having one or more features
from a set of features comprising: enabling agents perform [sic] queries of
other agents; enabling agents to exchange information with other agents; and
enabling agents to set triggers within other agents.” See generally Resp. To
the extent that Patent Owner did not respond to Petitioner’s arguments and
evidence with respect to this claim limitation, we find that Patent Owner has
waived any such argument. See paper 17, 7. To the extent that Patent
Owner responded to Petitioner’s arguments and evidence concerning
“triggers” as recited in claim 1, we refer to our analysis, supra, of the
parties’ arguments and evidence in Section II.C.7.c.iv.
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Based on the complete record and for the reasons explained by
Petitioner with respect to this limitation in claim 48 and for the reasons set
forth, supra, with respect to our analysis of similar limitations in claim 1, we
are persuaded that Petitioner has demonstrated sufficiently that the combined
teaching of Kiss/FIPA97 teach the recited limitation of claim 48.
d. Compound Goal Expression
Claim 48 also recites, “the ICL having a syntax supporting compound
goal expressions.” Petitioner asserts the combined teachings of Kiss and
FIPA97 satisfy this claim limitation for the reasons it stated in the Petition at
§ VI.A.1.e(ii) (Pet. 45–47), concerning claim 1’s recitation of the limitation
“arbitrarily complex goal expression.” See Pet. 63.
Patent Owner does not specifically provide any arguments or evidence
directed to this limitation of claim 48. See generally Resp. To the extent
Patent Owner did not respond to Petitioner’s arguments and evidence with
respect to this limitation of claim 48, we find that Patent Owner has waived
any such argument. See paper 17, 7.
With respect to the parties’ arguments and evidence provided for
claim 1’s recitation of an “arbitrarily complex goal expression,” we refer to
our analysis, supra, in Section II.C.7.d and e. Based on the complete record
and for the reasons set forth, supra, with respect to our analysis of a similar
limitation in claim 1, we are persuaded that Petitioner has demonstrated
sufficiently that the combined teachings of Kiss/FIPA97 meet the recited
limitation of claim 48.
e. Syntax Operators
Claim 48 also recites, “wherein said compound goal expressions are
such that goals within a single request provided according to the ICL syntax
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may be coupled by one or more operators from a set of operators
comprising: a conditional execution operator; and a parallel disjunctive
operation that indicates that disjunct goals are to be performed by different
agents.”
i. Sub-goals separated by operators
Petitioner asserts the combined teachings of Kiss and FIPA97 satisfy
the recited “wherein said compound goal expressions are such that goals
within a single request provided according to the ICL syntax may be coupled
by one or more operators” for the reasons stated in the Petition at
§ VI.A.1.e(ii) (Pet. 45–47). Pet. 63.
Petitioner also argues it would have been obvious to include a base
goal that is a compound goal having sub-goals separated by operators in the
system of Kiss and FIPA97 based on the teachings of FIPA97, and,
alternatively, on the teachings of Kiss. Id. at 63–64 (citing Ex. 1003 ¶¶ 166,
286–287, 341–344, 479).
ii. A conditional execution operator
Petitioner argues the teachings of Kiss and FIPA97 disclose that
operators can include “a conditional execution operator.” Pet. 64. Petitioner
point out that FIPA97 explains that the performative “request-when” can be
used as a “conditional execution operator.” Id. (citing Ex. 1003 ¶ 486).
Petitioner also points to FIPA97’s explanation that request-when takes an
action “when some given proposition becomes true.” Id. Therefore,
Petitioner argues, a performative (“operator”) indicates that an action should
be taken when a conditional test becomes true (“task is executed if a given
condition is true”). Id.
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iii. A parallel disjunctive operation
Petitioner asserts the teachings of Kiss and FIPA97 also show that
operators can include a “parallel disjuncti[ve] operator” in the form of an
operator that is able to query multiple disjunct agents in a single expression.
Pet. 65. Petitioner asserts FIPA97’s disclosed content language (SL2)
supports grammars for “quantifying-in inside modal operators.” Id. (citing
Ex. 1007, 78).
Patent Owner does not specifically provide any arguments or evidence
directed to the syntax operator limitations of claim 48. See generally Resp.
To the extent Patent Owner did not respond to Petitioner’s arguments and
evidence with respect to this limitation of claim 48, we find that Patent
Owner has waived any such arguments. See paper 17, 7.
With respect to the parties’ arguments and evidence provided for
claim 1’s recitation of an “arbitrarily complex goal expression,” we refer to
our analysis, supra, in Section II.C.7.d and e. Based on the complete record
and for the reasons explained by Petitioner with respect to these limitations
in claim 48, and for the reasons we set forth, supra, with respect to our
analysis of similar limitations in claim 1, we are persuaded that Petitioner
has demonstrated sufficiently that the combined teachings of Kiss/FIPA97
meet the recited limitation of claim 48 “wherein said compound goal
expressions are such that goals within a single request provided according to
the ICL syntax may be coupled by one or more operators from a set of
operators comprising: a conditional execution operator; and a parallel
disjunctive operation that indicates that disjunct goals are to be performed by
different agents.”
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f. Conclusion as to Claim 48
In consideration of the foregoing and based on the complete record,
we are persuaded by Petitioner’s arguments and evidence, notwithstanding
Patent Owner’s arguments, addressed above. Having weighed each of the
Graham factors, including the scope and content of the prior art, the
differences between the prior art and the challenged claim, and the objective
evidence of nonobviousness, we determine that Petitioner has demonstrated
by a preponderance of the evidence that claim 48 is unpatentable under
35 U.S.C. § 103(a) as obvious over the combination of Kiss and FIPA97.
9. Dependent Claims 2, 3, 11, and 49–60
Petitioner argues the combination of Kiss and FIPA97 teaches or
suggests the recited limitations of dependent claims 2, 3, 11, and 49–60.
Pet. 54–85.
a. Claim 2
Claim 2 recites, “[a] computer-implemented method as recited in
claim 1, further including the following acts of: receiving a new request for
service as a base goal using the inter-agent language, in the form of another
arbitrarily complex goal expression, from at least one of the selected client
agents in response to the sub-goal dispatched to said agent; and recursively
applying the step of dynamically interpreting the arbitrarily complex goal
expression in order to perform the new request for service.”
Petitioner argues that Kiss/FIPA97 satisfies the “receiving a request”
limitation of claim 2 because:
[t]he meta-agent in Kiss dispatches a sub-request (“sub-goal”) to
the Production Agent (“at least one of the selected client
agents”) requesting confirmation of the cost per-unit of a
specified number of units. Ex. 1005, 13:22-35, Figs. 8–20. In
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response, the meta-agent receives from the Production Agent a
request to “identify the cost of a sufficient number of production
lines to produce the specified number of units,” Ex. 1005, 13:36–
39, which is both a new request for service”—it had not been
previously received by the meta-agent—and a “base goal”—it is
a basic request needed by the Production Agent to perform its
task. The request is “using the inter-agent language in the form
of another arbitrarily complex goal expression” because, as
demonstrated above, all communications between agents in the
Kiss/FIPA97 are made using the FIPA ACL, and a request in the
FIPA ACL satisfies the inventors’ express definition of
“arbitrarily complex goal expression.”
Pet. 55 (citing id. § VI.A.1.e(ii); Ex. 1003 ¶ 340).
Petitioner also argues that Kiss/FIPA97 satisfies the “recursively
interpreting the goal expression” limitation of claim 2 because:
[i]n responding to the Production Agent requested noted above,
the meta-agent receives two additional requests (i.e., cost of
materials and labor), each relating to the original sub-request sent
to the Production Agent. Ex. 1005, 13:56–58, 14:3–5. In
responding to those additional requests, the meta-agent is
“recursively . . . dynamically interpreting” Production Agent
request by determining the appropriate agent to respond, placing
the task on the agenda, and issuing another sub-request.
Pet. 55–56 (citing Ex. 1005, 5:33–39; Ex. 1003 ¶ 342).
Petitioner further argues that for the reasons set forth in its Petition at
Section VI.A.1.e(ii), it would have been obvious for the Production Agent to
combine its three sub-requests into a single request because it needed the
three types of requested information and because FIPA ACL permits such
compound service requests. Pet. 56 (citing Ex. 1003 ¶¶ 343–345).
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Patent Owner does not respond specifically to Petitioner’s evidence
and arguments presented with respect to claim 2. See, e.g., Resp. 65–119.31
Based on the complete record and for the reasons explained by Petitioner,
we are persuaded that Petitioner has demonstrated sufficiently that the
proffered combination of Kiss/FIPA97 teaches or suggests “a computer-
implemented method as recited in claim 1, further including the following
acts of: receiving a new request for service as a base goal using the inter-
agent language, in the form of another arbitrarily complex goal expression,
from at least one of the selected client agents in response to the sub-goal
dispatched to said agent; and recursively applying the step of dynamically
interpreting the arbitrarily complex goal expression in order to perform the
new request for service,” as recited in claim 2.
b. Claim 3
Claim 3 recites, “[a] computer-implemented method as recited in
claim 2 wherein the act of registering a specific agent further includes:
invoking the specific agent in order to activate the specific agent;
instantiating an instance of the specific agent; and transmitting the new agent
profile from the specific agent to a facilitator agent in response to the
instantiation of the specific agent.”
Petitioner argues:
FIPA97 discloses the initiation of the creation of an agent to play
a specific role in the system (“invoking the specific agent in order
to activate the specific agent”), a responsibility of the Agent
Management System and part of the registration process. Ex.
1006, 2, 7, 11, 17, Fig. 3. That functionality results in the

31 To the extent Patent Owner has not responded to Petitioner’s arguments
and evidence with respect to this claim limitation, we find that Patent Owner
has waived any such argument. See paper 17, 7.
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activation of a new agent (“instantiating an instance of the
specific agent”). Ex. 1006, 16, 17, 18, Fig. 3. Moreover, in the
combined system, the details concerning the interests and
capabilities of that new agent (“new agent profile from the
specific agent”) are provided (“transmitting”) to the agent
service layer, which combined with the meta-agent of Kiss
constitutes “a facilitator agent” because it is responsible for
matching requests, from users and agents, with descriptions of
the capabilities of other agents, (Ex. 1001, 4:64–66). Ex. 1005,
12:21–14:30, Figs. 8–20. FIPA97 also discloses a Directory
Facilitator (“facilitator agent”), which provides analogous
functionality, Ex. 1006, 6–7, and for that reason would in the
combined system be implemented in the meta agent.
Pet. 56–57 (citing Ex. 1003 ¶¶ 217–219, 348.
Petitioner also argues,
it would have been obvious to include this claim element in the
combined system. Ex. 1003 ¶ 349. It would have been obvious
to include, as part of the registration process, a process that
initiates the creation of an agent to play a specific role in the
system (“invoking the specific agent in order to activate the
specific agent”) because a Skilled Artisan would have
understood that new agents would at times have to be added to
the system, so she would have been motivated to include a
process for doing so. Indeed, the Production Agent of Kiss would
necessarily have to be created by the system before it could
provide the functionality described in Kiss. Initiating that
creation process would be obvious from the disclosures of Kiss
and FIPA97 because it was a necessary prerequisite to providing
the described functionality of the Production Agent.
Pet. 57 (citing Ex. 1003 ¶ 350).
Patent Owner does not respond specifically to Petitioner’s evidence
and arguments presented with respect to claim 3. See, e.g., Resp. 65–119.
To the extent Patent Owner has not responded to Petitioner’s arguments and
evidence with respect to this claim limitation, we find that Patent Owner has
waived any such argument. See paper 17, 7.
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Based on the complete record and for the reasons explained by
Petitioner, we are persuaded that Petitioner has demonstrated sufficiently
that the proffered combination of Kiss/FIPA97 teaches or suggests “[a]
computer-implemented method as recited in claim 2 wherein the act of
registering a specific agent further includes: invoking the specific agent in
order to activate the specific agent; instantiating an instance of the specific
agent; and transmitting the new agent profile from the specific agent to a
facilitator agent in response to the instantiation of the specific agent,” as
recited in claim 3.
c. Claim 11
Claim 11 recites, “[a] computer-implemented method as recited in
claim 1 further comprising the act of establishing communication between
the plurality of distributed agents.”
Petitioner argues, “Kiss discloses “establishing communication
between the plurality of distributed agents” through the use of “inter-agent
abstract communications facilities” which allow agents to “negotiate with
each other, conduct joint planning, and to collaborate in the execution of
planned tasks.” Ex. 1005, 3:32–36. The system in Kiss facilitates “agent-to-
agent interaction.”
Pet. 58 (citing Ex. 1005, 7:13, 12:21–14:33; Figs. 8–21; Ex. 1003 ¶¶ 385,
386).
Patent Owner does not respond specifically to Petitioner’s evidence
and arguments presented with respect to claim 11. See, e.g., Resp. 65–119.
To the extent Patent Owner has not responded to Petitioner’s arguments and
evidence with respect to this claim limitation, we find that Patent Owner has
waived any such argument. See paper 17, 7.
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Based on the complete record and for the reasons explained by
Petitioner, we are persuaded that Petitioner has demonstrated sufficiently
that the proffered combination of Kiss/FIPA97 teaches or suggests “[a]
computer-implemented method as recited in claim 1 further comprising the
act of establishing communication between the plurality of distributed
agents,” as recited in claim 11.
d. Claims 51, 52
Claim 51 recites, “[a]n ICL as recited in claim 48 wherein the ICL
syntax supports explicit task completion constraints include use of specific
agent constraints and response time constraints.”
Claim 52 recites, “[a]n ICL as recited in claim 51, wherein possible
types of task completion constraints include use of specific agent constraints
and response time constraints.”
Petitioner argues that:
[i]n Kiss, when using the “Real Time” inferencing method the
user may specify “I am willing to wait ten minutes for a
response,” at which point the meta-agent may “deactivate” any
knowledge agents who “do not meet time delay.” Ex. 1005,
7:65–8:2. Because these “constraints” effect how the
inferencing process is carried out and can result in “partial
information from the incomplete knowledge agent,” Ex. 1005,
8:1–2, they are “task completion constraints.”
Pet. 68–69 (citing Ex. 1003 ¶ 517).
Petitioner argues that:
Kiss also discloses the use of “specific agent constraints.”
Partitioned inferencing, which is a type of constraint on task
completion, is used where the “problem domain is easily divided
into distinct subfields,” in this case the meta-agent should have
the “available subfield and query division possibilities.” Ex.
1005, 7:53–58. Therefore, the meta-agent could divide the
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problem based upon specific agent constraints such as the
subfields and problem domain.
Pet. 69 (citing Ex. 1003 ¶ 603).
Petitioner argues:
Kiss further discloses “response time constraints” in the
inferencing method called “Real Time.” When using the “Real
Time” inferencing, which is a type of constraint on task
completion, method the user may specify, “I am willing to wait
ten minutes for a response,” at which point the meta-agent may
“deactivate” any knowledge agents who “do not meet time
delay.”
Pet. 69 (citing Ex. 1005, 7:65–8:2; Ex. 1003 ¶¶ 604, 605).
In the alternative, Petitioner argues:
FIPA97 also discloses “task completion constraints.” FIPA97
discloses the use of the performative “request-when,” which
causes an agent to “inform” another agent that a certain action
should be performed “as soon as a given precondition, expressed
as a proposition, becomes true.” Ex. 1007, 40; Ex. 1003 ¶ 518.
Therefore, FIPA97 disclose a performative which applies an
“explicit . . . constraint” (wait until alarm) on “task completion”
(before completing the action in the performative).
Pet. 69–70 (citing Ex. 1003 ¶¶ 519–520).
Petitioner argues that:
FIPA97 also discloses “specific agent constraints,” such as the
“Quality of Service” parameter, which is a type of constraint on
task completion that allows the user to specify which networks
can be used in a VPN connection, such as “Constant Bit Rate
(CBR) traffic for voice ATM network.” Ex. 1012, 46. Therefore,
FIPA ACL supports constraints based on the functional
capabilities of specific agents.
Pet. 70 (citing Ex. 1003 ¶¶ 600–601).
Petitioner argues:
FIPA97 also discloses “response time constraints” in the form
of “Response Time,” which is a type of constraint on task
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completion, as a negotiation metric between agents. Ex. 1012,
30. FIPA97 describes how FIPA ACL can support response time
based conditions through the specification of a special parameter
“respond-by” which “[d]enotes a time interval or event(s) when
a response to a request is desired.”
Pet. 70 (citing Ex. 1012, 47; Ex. 1003 ¶ 602).
Patent Owner does not respond specifically to Petitioner’s evidence
and arguments presented with respect to claims 51 and 52. See, e.g., Resp.
65–119. To the extent Patent Owner has not responded to Petitioner’s
arguments and evidence with respect to this claim limitation, we find that
Patent Owner has waived any such argument. See paper 17, 7.
Based on the complete record and for the reasons explained by
Petitioner, we are persuaded that Petitioner has demonstrated sufficiently
that the proffered combination of Kiss/FIPA97 teaches or suggests “[a]n ICL
as recited in claim 48 wherein the ICL syntax supports explicit task
completion constraints include use of specific agent constraints and response
time constraints,” and “[a]n ICL as recited in claim 51, wherein possible
types of task completion constraints include use of specific agent constraints
and response time constraints,” as recited in claims 51 and 52, respectively.
e. Claims 53, 54
Claim 53 recites, “[a]n ICL as recited in claim 51 wherein the ICL
syntax supports explicit task completion advisory suggestions within goal
expressions.”
Claim 54 recites, “[a]n ICL as recited in claim 48 wherein the ICL
syntax supports explicit task completion advisory suggestions within goal
expressions.”
Petitioner argues, “FIPA97 discloses ‘Advice Parameters’ in the form
of searches within the ‘Directory Facilitator.’ Agents may use the directory
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performative ‘search’ to search local or remote directories for relevant
resources.” Pet. 71 (citing Ex. 1006, 20; Ex. 1003 ¶ 610). Petitioner argues
“FIPA97 discloses two possible ‘constraints;’ Directory Facilitator Depth
(‘df-depth’) and Required Number of Records (‘recs-req’).” Pet 71 (citing
Ex. 1006, 21–22). “The Directory Facilitator Depth constraint,” Petitioner
argues, “is similar to the level_limit ‘Advice Parameter’ disclosed in the
’115 Patent; both define how many directory facilitators should be searched
to locate specific agents.” Pet. 71–72 (citing Ex. 1006, 21–22).
Patent Owner does not respond specifically to Petitioner’s evidence
and arguments presented with respect to claims 53 and 54. See, e.g., Resp.
65–119. To the extent Patent Owner has not responded to Petitioner’s
arguments and evidence with respect to this claim limitation, we find that
Patent Owner has waived any such argument. See paper 17, 7.
Based on the complete record and for the reasons explained by
Petitioner, we are persuaded that Petitioner has demonstrated sufficiently
that the proffered combination of Kiss/FIPA97 teaches or suggests “[a]n ICL
as recited in claim 51 wherein the ICL syntax supports explicit task
completion advisory suggestions within goal expressions,” and “[a]n ICL as
recited in claim 48 wherein the ICL syntax supports explicit task completion
advisory suggestions within goal expressions,” as recited in claims 53 and
54, respectively.
f. Claim 55
Claim 55 recites, “[a]n ICL as recited in claim 48 wherein each
autonomous service-providing electronic agent defines and publishes a set of
capability declarations or solvables, expressed in ICL, that describes services
provided by such electronic agent.”
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Petitioner argues that “Kiss discloses a published set of “capability
declarations or solvables” by “maintaining a registry of agents in the
system,” Ex. 1005, 3:37–38, such as the agent registry.” Pet. 72 (citing Ex.
1005, 3:40–43, 12:1–17; Ex. 1003 ¶ 618).
Petitioner argues:
[t]he registry “identifies each agent's capabilities and interests,
and contains knowledge about the relationships between them,”
Ex. 1005, 3:40–43. (“each autonomous service-providing
electronic agent” / “set of capability declarations or solvables”).
Further, Kiss discloses that each agent is responsible for defining
and publishing these “capability declarations or solvables.” Kiss
explains that each knowledge module is associated with a
knowledge agent; in a one-to-one or many-to-one configuration.
Ex. 1005, 6:39–45. Further, each knowledge agents keeps
“summaries” (“solvables”) of the “domain features and
methods,” (“set of capability declarations”/ “services”) of its
associated knowledge modules, therefore the Knowledge Agent
“defines . . . a set of capability declarations or solvables.”
Pet. 73 (citing Ex. 1005, 6:46–48).
Petitioner also argues, “’the capabilities, interests, and attributes’ (‘set
of capability declarations’) for each module is registered (‘publishes’) in the
agent service layer by its associated agent. Ex. 1005, 6:48–51. Thus, each
associated Knowledge agent ‘defines and publishes a set of capability
declarations or solvables.’” Pet. 73–74 (citing Ex. 1003 ¶ 619).
In the alternative, Petitioner argues, “[a]lternatively, FIPA97 discloses
a ‘Directory Facilitator’ (DF) which provides ‘yellow pages’ services to
other agents. (‘a set of capability declarations or solvables, . . . that
describes services provided by such electronic agent.’). Ex. 1006, 6
(‘Agents may register their services with the DF or query the DF to find out
what services are offered by which agents.’).” Pet. 74 (citing Ex. 1003 ¶
621).
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Patent Owner does not respond specifically to Petitioner’s evidence
and arguments presented with respect to claim 55. See, e.g., Resp. 65–119.
To the extent Patent Owner has not responded to Petitioner’s arguments and
evidence with respect to this claim limitation, we find that Patent Owner has
waived any such argument. See paper 17, 7.
Based on the complete record and for the reasons explained by
Petitioner, we are persuaded that Petitioner has demonstrated sufficiently
that the proffered combination of Kiss/FIPA97 teaches or suggests “[a]n ICL
as recited in claim 48 wherein each autonomous service-providing electronic
agent defines and publishes a set of capability declarations or solvables,
expressed in ICL, that describes services provided by such electronic agent,”
as recited in claim 55.
g. Claim 56
Claim 56 recites, “[a]n ICL as recited in claim 55 wherein an
electronic agent's solvables define an interface for the electronic agent.”
Petitioner argues, “FIPA97 further discloses that the solvable may
‘define an interface.’ FIPA97 discloses various interface parameters (‘define
an interface’) which are included in the initial agent registration process
(‘solvables’). As part of registration each agent provides information on the
conditions and ontologies it accepts when processing a request.” Pet. 76
(citing Ex. 1006, 35; Ex. 1003 ¶ 626). Petitioner also argues, “these
parameters can define the language and syntax of communication between
the two agents (“interface for the electronic agent.”) and the conditions that
must be meet when processing a service request.” Pet. 77 (citing Ex. 1003 ¶
627).
Patent Owner does not respond specifically to Petitioner’s evidence
and arguments presented with respect to claim 56. See, e.g., Resp. 65–119.
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To the extent Patent Owner has not responded to Petitioner’s arguments and
evidence with respect to this claim limitation, we find that Patent Owner has
waived any such argument. See paper 17, 7.
Based on the complete record and for the reasons explained by
Petitioner, we are persuaded that Petitioner has demonstrated sufficiently
that the proffered combination of Kiss/FIPA97 teaches or suggests “[a]n ICL
as recited in claim 55 wherein an electronic agent's solvables define an
interface for the electronic agent,” as recited in claim 56.
h. Claim 57
Claim 57 recites, “[a]n ICL as recited in claim 56 wherein the
facilitator agent maintains an agent registry making available plurality of
electronic agent interfaces.”
Petitioner argues, “[e]ach agent in the system must register with a
directory facilitator agent. As part of this registration, the agent provides a
listing of its available ‘agent-services’ (‘agent interfaces’). Each of the
‘agent-services’ are part of the agent’s registration and are stored within the
agent registry.” Pet. 78 (citing Ex. 1003 ¶ 630).
“Therefore,” Petitioner argues, “the Directory Facilitator agent (‘the
facilitator agent’) manages and stores each agent’s registration including
each agent’s services (‘interface’) within the agent registry (‘maintains an
agent registry’). In the combined system, the Directory Facilitator would be
implemented in the meta agent of Kiss.” Pet. 79 (citing Ex. 1003 ¶¶ 348–
351,631.
Patent Owner does not respond specifically to Petitioner’s evidence
and arguments presented with respect to claim 57. See, e.g., Resp. 65–119.
To the extent Patent Owner has not responded to Petitioner’s arguments and
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evidence with respect to this claim limitation, we find that Patent Owner has
waived any such argument. See paper 17, 7.
Based on the complete record and for the reasons explained by
Petitioner, we are persuaded that Petitioner has demonstrated sufficiently
that the proffered combination of Kiss/FIPA97 teaches or suggests “[a]n ICL
as recited in claim 56 wherein the facilitator agent maintains an agent
registry making available plurality of electronic agent interfaces,” as recited
in claim 57.
i. Claim 58
Claim 58 recites, “[a]n ICL as recited in claim 57 wherein the possible
types of solvables includes procedure solvables, a procedure solvable
operable to implement a procedure such as a test or an action.”
Petitioner argues, “FIPA97 discloses a ‘solvable’ in the form of an
agent registration parameter that defines a test or action. As part of agent
registration, agent can provide a listing of their available ‘agent-services’
including a ‘service-type’ for each service that the agent provides.” Pet. 81
(citing Ex. 1006, 20; Ex. 1003 ¶ 636).
Petitioner argues, “the ‘service-type’ is used to ‘[d]enote[] the unique
service type’ (i.e., the actions the agent can take) on offer by the agent. Ex.
1006, 35. Therefore, the ‘service-type’ parameter represents a ‘solvable’ that
characterizes an action or test that is performed by the agent, and is thus a
‘procedure solvable.’” Pet. 82 (citing Ex. 1003 ¶ 638).
Patent Owner does not respond specifically to Petitioner’s evidence
and arguments presented with respect to claim 58. See, e.g., Resp. 65–119.
To the extent Patent Owner has not responded to Petitioner’s arguments and
evidence with respect to this claim limitation, we find that Patent Owner has
waived any such argument. See paper 17, 7.
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Based on the complete record and for the reasons explained by
Petitioner, we are persuaded that Petitioner has demonstrated sufficiently
that the proffered combination of Kiss/FIPA97 teaches or suggests “[a]n ICL
as recited in claim 57 wherein the possible types of solvables includes
procedure solvables, a procedure solvable operable to implement a
procedure such as a test or an action,” as recited in claim 58.
j. Claims 59, 60
Claim 59 recites, “[a]n ICL as recited in claim 58 wherein the possible
types of solvables further includes data solvables, a data solvable operable to
provide access to a collection of data.”
Claim 60 recites, “[a]n ICL as recited in claim 58 wherein the possible
types of solvables further includes data solvables, a data solvable operable to
provide access to a collection of data.”
Petitioner argues, “FIPA97 discloses a WRAPPER agent ontology
that can be used to define and provide access to a data source. A wrapper
agent is used to integrate non-agent software, databases, and systems into a
community of agents by creating an agent that translates between the agents
and the non-agent software.” Pet. 82–83 (citing Ex. 1008, 5–6; Ex. 1003
¶ 641. Petitioner argues, “a wrapper agent can be used to connect a data
source into the community of agent by translating between the data query
language of the data source and the agent communication language. Pet. 83
(citing Ex. 1008, 6; Ex. 1003 ¶ 642). Petitioner argues, “[b]y registering this
functionality with the directory facilitator, the wrapper agent ‘will allow
client agents to invoke commands on the underlying software system,
translating the commands contained in ACL messages into operations on the
underlying software system.’” Pet. 84 (citing Ex. 1008, 9; Ex. 1003 ¶ 643).
“Therefore,” Petitioner argues, “when a wrapper agent registers with the
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directory facilitator it will discloses that it provides access to a data source
through this ‘service-type’ parameter (‘data solvable’).” Pet. 85 (citing Ex.
1003 ¶ 644).
Patent Owner does not respond specifically to Petitioner’s evidence
and arguments presented with respect to claims 59 and 60. See, e.g., Resp.
65–119. To the extent Patent Owner has not responded to Petitioner’s
arguments and evidence with respect to this claim limitation, we find that
Patent Owner has waived any such argument. See paper 17, 7.
Based on the complete record and for the reasons explained by
Petitioner, we are persuaded that Petitioner has demonstrated sufficiently
that the proffered combination of Kiss/FIPA97 teaches or suggests “[a]n ICL
as recited in claim 58 wherein the possible types of solvables further
includes data solvables, a data solvable operable to provide access to a
collection of data,” and “[a]n ICL as recited in claim 58 wherein the possible
types of solvables further includes data solvables, a data solvable operable to
provide access to a collection of data,” as recited in claims 59 and 60,
respectively.
D. Motion to Exclude
Patent Owner filed a Motion to Exclude (Paper 35, “Motion”) certain
“a portion of Exhibit 1129, as well as related testimony relied on by
[Petitioner].” Paper 35, 1. Exhibit 1129 is the deposition transcript of
Patent Owner’s expert Dr. Medvidovic, taken on May 19, 2020. Patent
Owner seeks to exclude Petitioner’s reliance “on portions of Dr.
Medvidovic’s deposition testimony that should be excluded because the
question on which the testimony is based is vague, ambiguous, confusing,
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lacks foundation and calls for a legal conclusion. And any testimony elicited
from this improper question is irrelevant, prejudicial, and misleading.” Id.
In particular, Patent Owner seeks to exclude lines 53:19–54:21 of
Exhibit 1129, which reads as follows:
Q: If that's true, then it's your opinion these three things, these
three types of processing are required to teach '115's facilitator,
correct?
MS. ABDULLAH: Objection.
BY THE WITNESS:
A: I think that the authors of the patent, the inventors were very
careful to specify that this is is an embodiment. It's a preferred
embodiment. There are other embodiments that they discuss. For
this particular embodiment that deals with compound goals,
delegation, optimization and interpretation are preferably
involved. So this is the preferred embodiment. This is a legal
thing, not a technical thing. What a preferred embodiment is,
that's something that appears in patents, pretty much every patent
I've ever read, software patent, anyway. It is something that has
a particular meaning. So if you want to handle compound goals,
you need to have three types of processing preferably,
delegation, optimization and interpretation. So it is my opinion
that anybody who tries or, sorry, anybody who is claiming,
purporting to be solving the same kinds of problems needs to
show an embodiment that matches those three.
Ex. 1129, 53:19–54:21.
Patent Owner argues that Petitioner “attempts to use this improper
testimony to support its incorrect conclusion that ‘delegation, optimization,
and interpretation’ are ‘functionalities [] limited to a preferred embodiment,
(EX1001, 19:1-4), so they are not relevant to the claims.’ Paper 35, 3 (citing
Reply 37). Patent Owner argues that Petitioner’s “Microsoft’s “question
was vague, ambiguous, confusing, lacked foundation and called for a legal
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conclusion.” Paper 35, 3–4. Patent Owner also argues “the testimony is
irrelevant, prejudicial, and misleading. Id. at 4.
Petitioner opposes the motion (Paper 36), arguing that the testimony is
admissible and that Petitioner’s counsel “failed to object to this question
with sufficient specificity at the appropriate time.” Paper 36, 1 (citing
PTAB Consolidated Trial Practice Guide, pg. 128 (November 2019) (“An
objection must be stated concisely in a non-argumentative and non-
suggestive manner.”). Petitioner points out that Patent Owner’s counsel
“only said ‘Objection’ but failed to indicate what type of objection—i.e.,
form, relevance, etc.” Paper 36, 1. Petitioner argues that for the first time,
Patent Owner “now attempts to assert multiple grounds for exclusion which
were not previously raised—objections which it has waived.” Id.
“Furthermore,” Petitioner argues, Patent Owner “does not explain how the
question is “vague, ambiguous, and confusing,” and that “summarily saying
it is without more is insufficient to challenge admissibility.” Id. at 1–2
(citing 37 CFR § 42.20 (c); Samsung Electronics America, Inc. v. Uniloc
2017 LLC, IPR2017-01798, Paper 32, 103 (PTAB Jan. 31, 2019)).
Petitioner also points out that:
the party proffering a witness for cross-examination has the
opportunity to conduct redirect examination of the witness
immediately following the cross-examination to cure any
perceived deficiency or to provide a more complete answer. See
37 CFR § 42.53(c)(2); CBS Interactive Inc. v. Helferich Patent
Licensing, LLC, IPR2013-00033, Paper 101 (Oct. 7, 2013);
Garmin Int’l, Inc. v. Cuozzo Speed Techs. LLC, IPR2012-00001,
Paper 50 (July 18, 2013). Here, IPA did not avail themselves of
this opportunity. Ex. 1129, 164:15-16 (“MS. ABDULLAH: IPA
does not have any redirect”).
Paper 36, 2.
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In its Reply (Paper 38), Patent Owner argues “[t]he vague,
ambiguous, confusing, lack of foundation, and legal conclusion nature of
questions asked by Microsoft’s counsel in Exhibit 1129 is clear both on its
face and by Dr. Medvidovic’s deposition response,” and that “[Patent
Owner’s] counsel properly and timely objected.” Paper 38, 1.
We are not persuaded by Patent Owner’s arguments that Dr.
Medvidovic’s testimony should be excluded from evidence in this
proceeding. Although Patent Owner’s counsel did state the word
“Objection” in response to Petitioner’s question to Dr. Medvidovic, Patent
Owner’s counsel did not state the nature of objection, thus depriving
Petitioner’s counsel of the opportunity to cure the objection by rephrasing
the question.
In its Motion to Exclude, Patent Owner now takes the position that the
question is “vague, ambiguous, confusing, lacks foundation and calls for a
legal conclusion.” Paper 35, 1. Patent Owner, however, does not explain
adequately how the question is vague, ambiguous or confusing, other than to
state that “Dr. Medvidovic[’s] testimony highlights the vague, ambiguous,
and confusing nature of Microsoft’s question.” Id. at 2. Nor does Patent
Owner explain adequately how the question lacks foundation or calls for a
legal conclusion aside from pointing to Dr. Medvidovic’s response that
“[t]his is a legal thing, not a technical thing” in reference to the term
“preferred embodiment.” Id.
Patent Owner also argues that Dr. Medvidovic’s response to the
question is “irrelevant, prejudicial, and misleading.” Id. at 4. Dr.
Medvidovic’s testimony, however, concerns his understanding of a preferred
embodiment described in the ’115 patent and his opinion of whether the
prior art, in particular, Kiss, teaches a “facilitator.” See, e.g., Ex. 1129,
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52:15–54:21. We find it difficult to see how Dr. Medvidovic’s testimony is
“irrelevant,” since it goes to his understanding of the ’115 patent, the
asserted prior art, and the nature of his opinion in this proceeding.
It is also relevant to note, as Petitioner points out, that Patent Owner’s
counsel had “the opportunity to conduct redirect examination of the witness
immediately following the cross-examination to cure any perceived
deficiency or to provide a more complete answer.” Paper 36, 2 (citing 37
CFR § 42.53(c)(2); CBS Interactive Inc. v. Helferich Patent Licensing, LLC,
IPR2013-00033, Paper 101 (Oct. 7, 2013); Garmin Int’l, Inc. v. Cuozzo
Speed Techs. LLC, IPR2012-00001, Paper 50 (July 18, 2013). Patent
Owner’s counsel, however, declined to redirect any questions to Dr.
Medvidovic. See Ex. 1129, 164:15–16.
As for Dr. Medvidovic’s testimony being prejudicial or misleading,
the Board, sitting as a non-jury tribunal with particular administrative and
technical expertise, is not as vulnerable to being misled or prejudiced as a
jury might, and is well-positioned to determine and assign appropriate
credibility and weight to the evidence presented at trial, without resorting to
a formal exclusion of evidence that might later be held to be reversible error.
See, e.g., Liberty Mutual Insurance Co. v Progressive Casualty Insurance
Co., Case CBM2012- 00002, slip op. at 70 (PTAB, Jan, 23, 2014) (Paper
66), Gnosis S.P.A., et al. v S. Alabama Medical Science Foundation, Case
IPR2013-00118, slip op. at 43 (PTAB June 20, 2014) (Paper 64).
For these reasons, we deny Patent Owner’s Motion.

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CONCLUSION
For the foregoing reasons, we determine that Petitioner has
demonstrated by a preponderance of the evidence that claims 1–3, 11, and
48–60 of the ’115 patent are unpatentable on the bases set forth in the
following table.32

Claims 35 U.S.C. § References Claims
Shown
Unpatentable
Claims
Not shown
Unpatentable
1–3, 11,
48–60
103 Kiss,
FIPA97
1–3, 11, 48–60
Overall
Outcome
1–3, 11, 48–60

32 Should Patent Owner wish to pursue amendment of the challenged claims
in a reissue or reexamination proceeding subsequent to the issuance of this
Final Decision, we draw Patent Owner’s attention to the April 2019 Notice
Regarding Options for Amendments by Patent Owner Through Reissue or
Reexamination During a Pending AIA Trial Proceeding. See 84 Fed. Reg.
16,654 (Apr. 22, 2019). If Patent Owner chooses to file a reissue application
or a request for reexamination of the challenged patent, we remind Patent
Owner of its continuing obligation to notify the Board of any such related
matters in updated mandatory notices. See 37 C.F.R. § 42.8(a)(3), (b)(2).
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ORDER
In consideration of the foregoing, it is hereby
ORDERED that Petitioner has demonstrated by a preponderance of
the evidence that claims 1–3, 11, 48–60 of U.S. Patent No. Patent 6,851,115
B1 are unpatentable; and
FURTHER ORDERED that Patent Owner’s Motion to Exclude is
denied; and
FURTHER ORDERED that because this is a Final Written Decision,
any party to the proceeding seeking judicial review of this Decision must
comply with the notice and service requirements of 37 C.F.R. § 90.2.

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PETITIONER:

Joseph Micallef
Scott Border
Ethan Plail
SIDLEY AUSTIN LLP
jmicallef@sidley.com
sborder@sidley.com
eplail@sidley.com

PATENT OWNER:

Steven Hartsell
Sadaf Abdullah
Alexander Gasser
Sarah Spires
SKIERMONT DERBY LLP
shartsell@skiermontderby.com
sabdullah@skiermontderby.com
agasser@skiermontderby.com
sspires@skiermontderby.com